Trademark has been defined in Section 2(zb) of the Trade Marks

Act, 1999 as: “A mark capable of being represented graphically and

which is capable of distinguishing the goods/services of one person
from those of others and may include the shape of goods, their
packaging, and combination of colors”.
Trademarks are essential in developing a company’s brand name
and goodwill. It not only aids in the creation of brand value but also
aids in the generation of revenue. A trademark is vulnerable to
being infringed and/or misused because it is so important. One such
way of a trademark is making “deceptively similar” trademarks.

Interpretation and
Scope of Deceptive
Similarity
The concept of deceptive similarity has been discussed
under Section 2(h) of the Trade Marks Act, 1999 as: “A mark shall
be deemed to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion.”
In layman’s terms, deceptively similarity of marks can be defined as
similarity between trademarks that can lead the general public of
average intelligence to believe that the mark in question is
somehow related to a registered or well-known trademark.

According to Section 11(1) of the Trademark Act, 1999, “a

trademark cannot be registered if it is deceptively similar, or
identical, with the existing trademark and goods and services, that
is likely to create confusion in the mind of the public at large”.

Criteria for a court of

law or tribunal for
determining deceptive
similarity
The criteria for the determination of the deceptive similarity of
marks had been decided in the case of Cadilia Healthcare Limited v.
Cadilia Pharmaceutical Limited, where the Hon’ble Supreme Court
set out specific rules for deciding the nature of similar or misleading
marks.
Following are the one:

1. The nature of the marks, whether the marks are words, labels, or
composite marks.
2. The degree of resemblance between the marks, phonetic or
visual, or similarity in the idea.
3. The nature of goods or services in respect of which they are used
as trademarks.
4. The similarity in the nature, character, and performance of the
goods/services of the rival traders/service providers.
5. The class of purchasers/customers who are likely to buy the goods
or avail the services, on their education and intelligence and a
degree of care they are likely to exercise in purchasing and/or
using the goods.
6. The mode of purchasing in the trading channels that the
goods/services traverse in the course of business or placing an
order for the good.
Intention to deceive is
not necessary: The
guiding principle
One of the guiding factors in determining whether a mark deceives
or confuses does not depend on the intent to deceive. It makes no
difference whether the person has the intent to deceive the general
public or not. As a result, the intent to deceive does not need to be
proven.

In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietory Ltd., it was

held that the plaintiff was not required to prove the defendant’s
fraudulent intent, and it was not required as such. Furthermore,
once a defendant’s reputation has been established, plaintiffs do not
need to prove fraudulent intent or misrepresentation on the part of
the defendants.

Judicial
Interpretations
The Hon’ble Supreme Court of India has stated some criteria for the
determination of the deceptive similarity of trademarks. However, it
depends on individual facts and facets of cases. Following are some
of the recent judicial interpretations on Deceptive Similarity:

 Bigtree Entertainment v Brain Seed Sportainment: The

Delhi High Court denied the Plaintiffs, proprietors, and owners of
the website bookmyshow.com; an interim injunction against
Defendant’s use of the domain bookmysports.com.
 The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark
BOOKMYSHOW was descriptive and not an arbitrary coupling of
words and the Plaintiff’s failure to prove that ‘BOOKMY’ has
 attained distinctiveness or secondary meaning, led to the
dismissal of the application for interim injunction led by the
Plaintiffs.
 SM Dyechem Ltd. V. Cadbury (India) Ltd.: In this case, the
plaintiff established a chip and wafers business under the
trademark “PIKNIK.” Later, the defendant established a chocolate
business under the name “PICNIC.” Following that, a trademark
infringement suit was filed. The Court determined that the
trademarks did not fall into the category of deceptive similarity
because they differ in appearance and word composition.”
 M/S Allied Blenders and Distillers Pvt. Ltd. V. Govind
Yadav & Anr.: In this case, the plaintiff claimed that the
defendant’s trademark “Fauji” is defectively similar to that of the
plaintiff’s, i.e., “Officer’s Choice”. The claim was made based on
similarity of concept in the creation of the trademarks, as “Fauji”
is a Hindi translation of a military officer. “Furthermore, both
parties are in the alcoholic beverage business. Furthermore, the
packaging of both bottles is similar.
 Though trade dress plays a significant role in deciding the cases of
trademark infringement, in this case, the court held that there is
no deceptive similarity between the trademarks “Officer’s Choice”
and “Fauji” and hence, dismissed the trademark infringement suit.
 Parle Products (P) Ltd. v. J. P. & Co. Mysore: The Supreme
Court stated that to conclude whether a mark is deceptively
similar to another, the comprehensive and vital features of the
two are to be considered. They should not be placed side by side
to find out if there are any differences in the design and if so,
whether they are of such character as to avoid one design from
 being mistaken for the other. It would be enough if the
questionable mark bears such an overall resemblance to the
registered mark as would be likely to deceive a person usually
dealing with one to accept the other if offered to him.
 M/S Mahashian Di Hatti Ltd. v. Mr. Raj Niwas: In this case,
the plaintiff used the registered logo, MDH inside three hexagon
devices on red color background, in its business activity of
manufacturing and selling spices & condiments. The
aforementioned logo has been in use since 1949 in respect of
numerous products. The plaintiff contended that the logo used by
the defendant, MHS within a hexagon device with a red color
background was similar to its logo. The plaintiff, therefore,
pursued an injunction restraining the defendant who was also
involved in the same business activity from using the infringing
logo MHS or any other trademark identical or deceptively similar
to its MDH logo. The defendant inter alia tried to weaken these
arguments by contending the phonetic dissimilarity between MDH
and MHS.
The Court compared the logos of both the plaintiff and the
defendant and inter alia determined the following similarities:

1. as in the logo used by the plaintiff, the defendant made use of

three hexagons for structuring its logo;
2. the letters of both MDH and MHS were in white and
3. Similar to MDH, the background color in MHS was red.
In light of the above resemblances, the Court decided the presence
of strong visual resemblance despite weak phonetic resemblance.
Further, it was also noted that both the parties were involved in the
same business activity of manufacturing and selling spices. Thus,
the registered trademark of the plaintiff was held to
be infringed by the defendant.
Conclusion
Deceptive Similarity as a ground for refusal of trademark
registration is the most important feature of the Act, along with
other supplementary provisions covered under the purview of
Deceptive Similarity. As already discussed, proof of intention to
show Deceptive Similarity is irrelevant.
To establish infringement of a registered trademark, it is necessary
to establish that the infringing mark is identical or deceptively
similar to the registered mark, and no additional proof is required. In
a passing-off action, proving that the marks are identical or
deceptively similar is not enough. The mark’s use should be likely to
deceive or confuse. Furthermore, in a passing-off action, it is
necessary to prove that the defendant’s use of the trademark is
likely to cause injury or damage to the plaintiff’s goodwill, whereas,
in an infringement suit, the defendant’s use of the mark does not
need to cause any injury to the plaintiff.
As a result, it can be concluded that a proprietor cannot use another
proprietor’s trademark, nor can he adapt/use a mark originating
from another person with a well-established reputation and goodwill
that causes or is likely to cause confusion or deception in the minds
of the public.

DECEPTIVE SIMILARITY
The Trade Marks Act, 1999, defines ‘Deceptive Similarity’ under Section 2(h) as “a mark shall
be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as
to be likely to deceive or cause confusion.”[2]

A trade mark, deceptively similar, is one that is virtually identical to a mark that already exists
and has the potential to readily mislead and cause confusion in the eyes of consumers.
Deceptively similar trademarks are ones that sound and look very similar to the original
trademark, which increases the likelihood that consumers will be duped, causes financial loss,
and harms the reputation of the owner of the original trademark. One of the elements of
trademark infringement is deceptive resemblance. The Registrar of TradeMarks has the right to
reject a trademark applicant's application on the grounds of confusing likeness.
The Trademark Act, 1999, under Section 11(1) states that “a trademark cannot be registered if it
is deceptively similar, or identical, with the existing trademark and goods and services, that is
likely to create confusion in the mind of the public at large”.
The Supreme Court established the criteria for evaluating "Deceptive Similarity" in Cadila
Health Care Ltd v. Cadila Pharmaceutical Ltd.[3] The following criteria must be taken into
account while determining misleading similarity:-
● Nature of the mark (word, label or composite mark)
● The degree of alikeness between the marks
● Nature of the goods (services for which the Trade mark is used)
● The level of judgment and diligence shown by the buyer when making a purchase of products
or services
● The method by which the customer made the purchase or placed the order
● The similarity between the rival dealers' commodities in terms of their nature, functionality,
and personalities

Image showing Deceptively Similar Trademarks

THE GUIDING PRINCIPLE

The aim to deceive is not one of the deciding elements in figuring out if a mark confuses or
deceives. Whether or not the person intends to mislead the wider audience is irrelevant. So, there
is no need to establish that there was an intention to deceive.

In the case of Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd.[1], it was decided
that the plaintiff did not have to establish the defendant's fraudulent purpose. Furthermore,
plaintiffs are not required to demonstrate the defendants' fraudulent purpose or deception once
their reputation has been established.

LANDMARK CASES
A. Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd.[2] - The owner of the trademark
"CALMPOSE" for a medication is the plaintiff. The plaintiff claimed that the defendant began
producing a comparable drug under the name "CALMPROSE." The court determined that the
marks "CALMPOSE" and "CALMPROSE" are both used for the same class of goods, that they
are phonetically and aesthetically similar, and that they are therefore deceptively similar.

B. M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.[3] - Officer's Choice
was a trademark owned by the plaintiff. According to the plaintiff, the defendant's trademark
"Fauji" is confusingly similar to his trademark "Officer's Choice" since "Fauji" is a Hindi word
that, when translated, denotes a military officer. Both the plaintiff and the defendant are involved
in the alcohol industry. Furthermore, the bottle's packaging is the same. The lawsuit for
trademark infringement was dismissed because the court determined that there is no confusing
similarity between the trademarks "Officer's Choice" and "Fauji."

C. Starbucks Corporation v. Sardarbuksh Coffee and Co. & Ors.[4] - "STARBUCKS'' was a
registered trade mark owned by the plaintiff. Sardarbuksh Coffee & Co. is a business that the
defendants founded. Both the plaintiff and the defendant offered the same kind of goods and
services. According to the Delhi High Court, the name Sardarbuksh Company bears a phonetic
and visual resemblance to the "Starbucks'' logo, making it fall under the definition of "Deceptive
Similarity." As a result, the Delhi High Court mandated that Sardarbuksh change its name to
"SARDAR-JI-BAKSH" or "SARDAR-JI-BAKSH COFFEE & CO'' and modify its logo.
Sardarbuksh was further instructed to mark a new trademark registration application with a new
name.

D. SM Dyechem Ltd. v. Cadbury (India) Ltd.[5] - Under the trade name "PIKNIK," the plaintiff
was operating a business selling chips and wafers. Additionally, the defendant began operating a
chocolate shop under the name "PICNIC". A claim for trade mark infringement was made by the
plaintiff. Trial court ruled in favor of the plaintiff after concluding that the names "PIKNIK" and
"PICNIC" are confusingly similar. The matter was then appealed. The High Court overturned the
Trial Court's decision by ruling that the marks "PIKNIK" and "PICNIC" are not confusingly
similar. They differ in terms of both appearance and word structure. Also, the Supreme Court
upheld the High Court's judgment.

CONCLUSION
A trademark is essential to providing a company its identity and goodwill. Therefore, it is crucial
that it be safeguarded from being used fraudulently by individuals who use a mark or logo that is
very similar to or strikingly mimics the original trademark. The consumers become confused as a
result of this. A trademark enables buyers to identify the source of a product and to buy one of
high quality. In order to preserve the rights of the legitimate trademark holder and to safeguard
the interests of consumers, the judiciary has generally handled cases of misleading likeness and
has demonstrated strictness in such situations. The doctrine of deceptive similarity has been used
by courts to defend against trademark infringement and passing off. To ensure that instances of
trademark infringement are handled fairly, the judiciary has been particularly committed and
resolute in matters of deceptive likeness. The judiciary's stance in these situations is admirable
and gives people hope that justice will undoubtedly be done.

“Deceptively similar” trademark is a concept which can be understood as the

trademark created, almost similar or a look-alike of an already in existence
trademark in order to deceive and create confuse among the customers. This
concept of deceptive similarity has been discussed in The Trade Marks Act,
1999. According to Section 2(h) of the Act a trademark must deemed to be
deceptively similar to another trademark if it is nearly resembles with the other
mark as likely to deceive or cause any confusion in the mind of others.