INTRODUCTION
In the era of rapid evolution in technology, the protection of intellectual property has become imperative. Intellectual properties have become an integral part of the modern society. Trademarks serve as an essential tool for companies to differentiate their products and services from those of their competitors, thereby building brand value and consumer trust. In India, trademarks are regulated and governed by The Trade Marks Act, of 1999 which provides the legal framework for registration and protection of trademarks. However, in the modern world which is marked by technological advancements and global competition, the task of safeguarding trademarks has become difficult. The rise in the number of similar trademarks poses a significant threat to the original creators. Trademarks being similar creates confusion among consumers undermining the purpose of trademarks to distinguish between products and services.
UNDERSTANDING VISUAL AND PHONETIC SIMILARITIES IN TRADEMARKS
Similar trademarks are those marks that closely resemble another existing mark to a point where they can be easily mistaken for each other by the general consumer. Section 2 (1) (h) of The Trade Marks Act, 1999[1] defines similarity as when a mark is nearly indistinguishable from another causing confusion or deception. Similarity in trademarks can be classified as –
- Visual Similarity
- Phonetic Similarity
Visual similarity in trademarks refers to how much two or more trademarks visually look alike. It is about how similar they are in their appearance, including things like their shape, colour, design, size and other visual elements that the consumers would notice.[2]
Phonetic similarity refers to how much two or more trademarks sound alike when spoken. This involves similarity in their pronunciation, spelling, syllables and enunciation. A trademark is considered to be phonetically similar to another when it is pronounced or heard in a similar way by consumers. A few examples of phonetic similarity in trademarks are – Intellect and Entelec & Xseed and Xceed.[3]
Apart from visual and phonetic similarity, there exists another type of similarity – Conceptual similarity, which refers to both the visual and phonetic aspects of a trademark. It pertains to both what is seen and heard, referencing the eyes and ears. Trademarks help add a distinct value to a product by differentiating its source of goods and services preventing confusion among consumers. However, when two trademarks are conceptually similar, they are more likely to create confusion and deception.
JUDICIAL INTERPRETATION
In India, trademarks are regulated and governed by The Trade Marks Act, of 1999 which regulates and provides a legal framework for the protection and infringement of trademarks. Despite the provisions outlined in Section 9[4] and Section 11[5] of The Trade Marks Act, 1999 determination of the distinct nature of trademarks becomes a challenge and therefore requires judicial interpretation. While dealing with trademarks being similar the courts assess the marks in its entirety. Section 29 (9) of The Trade Marks Act, 1999[6] addresses infringement due to similarity in trademarks where it considers the spoken use of the mark as well as the visual representation of words. The Supreme Court of India has emphasized the importance of considering both the visual and verbal aspects of a trademark while dealing with its similarities.[7]
The assessment of similarity is done by considering both the visual and phonetic aspects of a trademark. The degree of similarity or dissimilarity in appearance and pronunciation is evaluated by considering the overall impression it conveys visually and orally. Additionally, consumers are the main target for any product or service, and the level of confusion among consumers while encountering these trademarks is taken into account. This comprehensive assessment helps in the protection of trademarks by preventing consumer confusion and misinterpretation.[8]
CASE STUDY
The significance of phonetic similarity as a key comparison aspect was established in the landmark case Cadila Healthcare Ltd. vs Cadila Pharmaceuticals Ltd.[9] The plaintiff Cadila Healthcare Ltd. sought to restrain the defendant from using the trademark ‘Falcitab’ for a drug similar to the plaintiff’s ‘Falcigo’, both for treating falciparum malaria. Despite the similarities, the court ruled in favour of the defendant emphasizing the differences in appearance, formulation and the consumers to which it targets, stating that there was no likelihood of confusion or deception. However, the Supreme Court upheld the previous judgement considering India’s diverse population, where non-English speakers are prevalent. The Supreme Court emphasized the potential health risks it had due to confusion as the product was a pharmaceutical product. The court established principles for assessing similarity- considering the nature of the mark, degree of similarity, characteristics of goods and most importantly the target consumers. The principles laid the foundation to ensure fair judgmentregarding phonetically similar trademarks protecting consumers from confusion and deception.[10]
Another case of phonetic similarity was in Elyon Pharmaceuticals Pvt. Ltd. vs The Registrar of Trademarks[11], in which the Delhi High Court looked at how similar two trademarks sounded. Eylon Pharmaceuticals wanted to register a new trademark called ‘ELEMENTIN’ for their medicine. However, The Registrar of Trademarks argued that it sounded too similar to another trademark ‘ELEMENTAL’ and rejected the application. Eylon argued that the two names sounded different and the Court agreed. They affirmed that the word ‘ELEMENTIN sounded different because it had fewer syllables and was a new word, while ‘ELEMENTAL’ was a commonly known word. Furthermore, the court pointed out that it wasn’t clear if the medicine sold under the name ‘ELEMENTAL’ had the same composition as the one Eylon Pharmaceuticals wanted to call ‘ELEMENTIN’. Since the case was about appealing the rejection of the trademark ‘ELEMENTIN’ due to its similarity to ‘ELEMENTAL’, there wasn’t enough information about the actual composition of the medicines. They said that this lack of information could make a difference in how people see the trademarks. The decision of the Court proves how important it is for trademarks to sound different and provide clear information about them to prevent confusion among consumers.[12]
In the case of Pidilite Industries Ltd. vs Poma-Ex Products[13], the similarity between two trademarks namely ‘Fevikwik’ an adhesive product owned by Pidilite Industries Ltd. since 1987 and ‘Kwikheal’ a similar sounding trademark by Poma-Ex Products was in question. The plaintiff Pidilite Industries Ltd. sued Poma-Ex Products for copying their trademark. The court looked at both trademarks and found out that the word ‘kwik’ in both was unusual and might confuse people. The court decided that the defendant’s product was too similar as well as their packaging and tagline making it difficult for consumers to differentiate between them. Therefore, the defendant was ordered to stop using the trademark ‘Kwikheal’ as it was deceiving and confusing for the consumers and could pose harm to the reputation associated with ‘Fevikwik’.[14]
CONCLUSION
While the Indian judicial system relies on interpreting laws considering how trademarks are distinct in their visual and oral aspects, protecting the interest of the consumers is the focal point in deciding cases. The ever-evolving technological landscape poses a challenge but maintaining a balance between innovation and safeguarding consumer interests remains key. India is a country with diverse languages with cultural differences, therefore considering the phonetic aspects of a trademark should not be the exclusive test to determine the distinctness of a trademark. A trademark requires to be considered in all aspects so that it is less likely to cause confusion and deception among the general public.
Author(s) Name: Abhinaba Datta
Reference(s):
[1] The Trade Marks Act 1999, s 2(1)(h)
[2]‘Visual Similarity’(Trademark Dictionary)<https://www.tramatm.com/trademark-dictionary/visual-similarity> accessed 9 February 2024
[3]‘Phonetic Similarity’ (Trademark Dictionary)<https://www.tramatm.com/trademark-dictionary/phonetic-similarity> accessed 9 February 2024
[4] The Trade Marks Act 1999, s 9
[5] The Trade Marks Act 1999, s 11
[6] The Trade Marks Act 1999, s 29(9)
[7]Kumar T, ‘How Much Do Phonetic Similarities Matter in Trademark Disputes? – Trademark – India’ (How Much Do Phonetic Similarities Matter in Trademark Disputes? – Trademark – India, 22 September 2021) <https://www.mondaq.com/india/trademark/1113710/how-much-do-phonetic-similarities-matter-in-trademark-disputes> accessed 9 February 2024
[8] ‘Phonetic Similarity’ (Trademark Dictionary) <https://www.tramatm.com/trademark-dictionary/phonetic-similarity> accessed 9 February 2024
[9] Cadila Healthcare Ltd. vs Cadila Pharmaceuticals Ltd. [2001] (2) PTC 541 SC
[10] Garg R, ‘Cadila Healthcare Ltd. v. Cadila Pharmaceuticals, 2001: Case Study’ (iPleaders, 8 February 2022) <https://blog.ipleaders.in/cadila-healthcare-ltd-v-cadila-pharmaceuticals-2001-case-study/> accessed 11 February 2024
[11]Elyon Pharmaceuticals Pvt. Ltd. vs The Registrar of Trademarks [2021] C.A. (COMM.IPD-TM) 153
[12] LexOrbis, ‘Phonetic Similarity in Trademark Disputes’ (LexOrbis, 12 September 2023) <https://www.lexorbis.com/phonetic-similarity-in-trademark-disputes/#> accessed 9 February 2024
[13] Pidilite Industries Ltd. vs Poma-Ex Products [2017] (72) PTC 1
[14] Law Essentials, ‘Pidilite Industries Ltd. v. Poma-Ex Products’ (Law Essentials) <https://lawessential.com/ip-case-laws/f/pidilite-industries-ltd-v-poma-ex-products?blogcategory=IP%2B%2BCase%2BLaws#:~:text=In%20this%20case%2C%20it%20was,the%20minds%20of%20the%20public.> accessed 11 February 2024
