Deceptive similarity and infringement of trade marks

1. Deceptive similarity: the definition and the approach

A mark is deemed deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion (section 2(1)(h)). Actual deception need not be proved; likelihood is enough. The courts have settled the approach:

• Compare the marks as a whole, not by dissecting them letter by letter.
• Look at the overall structural and phonetic similarity and the idea conveyed, because marks are remembered by their general impression and are often asked for orally.
• Judge from the viewpoint of the average purchaser with imperfect recollection, not a careful expert placing the marks side by side.
• Consider the goods, the class of buyers and the way the goods are bought.

2. The leading cases

Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 INSC 130, AIR 1960 SC 142. The registered mark “Glucovita” for glucose powder was opposed to “Gluvita” for biscuits. Held deceptively similar. The marks were alike in sound and idea, and there was a trade connection between glucose and biscuits, since glucose is an ingredient of biscuits and both are sold in the same shops. Evidence of other “gluco” marks on the register was of no value without proof that they were actually in use.

Amritdhara Pharmacy v. Satyadeo Gupta, 1962 INSC 170, AIR 1963 SC 449. “Lakshmandhara” was held deceptively similar to “Amritdhara”, both medicinal preparations. The question is to be approached from the point of view of a man of average intelligence and imperfect recollection; such a buyer, used to one name, would not split the words into their parts and compare meanings. (Registration was nevertheless allowed, limited to Uttar Pradesh, on the ground of acquiescence and long concurrent use.)

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co., 1969 INSC 223, (1969) 2 SCC 716. “Dropovit” was held not deceptively similar to “Protovit”. The suffix “vit” is common to the trade for vitamin preparations and descriptive; the distinguishing prefixes “Pro” and “Dro” were sufficiently different when the words were taken as a whole.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 INSC 173, (2001) 5 SCC 73. “Falcigo” and “Falcitab”, both drugs for malaria. The Court listed the factors to be weighed in an action for passing off (and in infringement) on the ground of deceptive similarity:

• (a) the nature of the marks — word, label or composite marks;
• (b) the degree of resemblance, phonetically similar and hence similar in idea;
• (c) the nature of the goods;
• (d) the similarity in nature, character and performance of the goods of the rivals;
• (e) the class of purchasers, their education and intelligence, and the degree of care they are likely to exercise;
• (f) the mode of purchasing the goods or placing orders; and
• (g) any other surrounding circumstances.

For medicines a stricter test applies, because confusion can endanger health; that a drug is sold only on prescription is not a sufficient safeguard in Indian conditions. The Court disapproved the approach in S.M. Dyechem Ltd. v. Cadbury (India) Ltd., 2000 INSC 312, (2000) 5 SCC 573 (“Piknik” and “Picnic”), which had stressed the dissimilarities between marks, and restated that the essential features and overall similarity are decisive.

3. Infringement: section 29

Only a registered mark can be infringed (section 27(1)). Section 29 covers the following cases, in each case by a person who is not the registered proprietor or a permitted user, using the mark in the course of trade:

• 29(1). Use of an identical or deceptively similar mark for the registered goods, in a manner likely to be taken as use as a trade mark.
• 29(2). Use of a mark which, because of (a) identity of mark and similarity of goods, (b) similarity of mark and identity or similarity of goods, or (c) identity of both, is likely to cause confusion or association. In case (c) the court shall presume confusion (section 29(3)).
• 29(4). Use of an identical or similar mark for dissimilar goods, where the registered mark has a reputation in India and the use without due cause takes unfair advantage of or is detrimental to its distinctive character or repute. All three conditions must be met.
• 29(5). Use of the registered mark as one’s trade name or business name, where the business deals in the goods or services for which the mark is registered.
• 29(6) lists what “use” includes: affixing to goods or packaging, offering or stocking goods, importing or exporting, and use on business papers or in advertising.
• 29(7) applying the mark to labels or packaging knowing it to be unauthorised; 29(8) advertising that takes unfair advantage, is contrary to honest practices or harms the mark’s distinctiveness or reputation; 29(9) a word mark is infringed by spoken use as well as visual representation.

In Ruston & Hornsby Ltd. v. Zamindara Engineering Co., 1969 INSC 224, (1969) 2 SCC 727, “Rustam India” for diesel engines was held to infringe “Ruston”; adding “India” made it worse, since it suggested an Indian branch of the same firm. In Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, 2022 INSC 70, the Supreme Court restored an injunction against “Sai Renaissance” hotels, holding that the High Court was wrong to require the reputation condition of section 29(4), which applies to dissimilar goods, in a case of an identical mark used for identical services.

Limits (section 30). Use in accordance with honest practices that does not take unfair advantage or harm the mark (comparative advertising within limits), descriptive use of kind, quality or purpose, use for parts and accessories, and resale of genuine goods lawfully acquired (exhaustion) are not infringement. Section 34 protects a prior user and section 35 a person’s bona fide use of his own name.

4. Remedies

• Civil. A suit in a court not inferior to a District Court; for infringement the plaintiff may sue where he resides or carries on business (section 134). Relief: injunction (including ex parte and interlocutory orders for discovery, preservation of evidence and restraint on disposal of assets), and at the plaintiff’s option damages or an account of profits, with delivery-up of infringing labels and marks (section 135).
• Criminal. Falsifying or falsely applying a trade mark, and selling goods bearing a false mark, are cognizable offences punishable with six months to three years’ imprisonment and fine of fifty thousand to two lakh rupees (sections 103 to 105, 115(3)).
• Administrative. Rectification of the register and opposition, and the customs border measures for goods infringing registered marks.

5. Problem 1: T-T and T-tea

A was producer of tea powder under the trade mark “T-T”. B also started producing tea products under the trade mark “T-tea”. Is there any infringement? (January 2026)

Issue. Whether “T-tea” is deceptively similar to “T-T” for the same goods.

Law. Sections 2(1)(h), 29(1), 29(2)(b) and 29(9); Amritdhara and Cadila.

Application. Spoken aloud, “T-T” and “T-tea” are identical: both are “tee-tee”. Section 29(9) makes spoken use an infringement of a word mark. The goods are identical, cheap and bought quickly, often by asking the shopkeeper for the brand by name, by buyers of every level of literacy. Under the Cadila factors (phonetic resemblance, identical goods, class of buyers, mode of purchase) confusion is almost certain. That “tea” is descriptive does not help B, since it is the combination that is copied.

Conclusion. If “T-T” is registered for tea, B infringes under section 29(1) and (2), and A may obtain an injunction and damages or an account of profits under section 135. If it is not registered, A’s remedy is passing off, on proof of goodwill.

6. Problem 2: Raymond

The plaintiff holds a registered trade mark “Raymond” on textile fabrics. The defendant starts using the title “Raymond Pharmaceutical (P) Ltd.” for his company. The plaintiff seeks an injunction. (February 2025)

Issue. Whether use of a registered mark as part of the name of a company in an unrelated field is infringement.

Law and application. Section 29(5), which covers use of a registered mark as a trade name, applies only where the defendant’s business deals in the goods for which the mark is registered; medicines are not textiles, so it does not apply. But section 29(4) does: the mark is identical; the goods are dissimilar; “Raymond” has a reputation in India built over decades; and use of it by a pharmaceutical company, without due cause, takes unfair advantage of that reputation and dilutes the distinctiveness of the mark. The plaintiff also has a claim in passing off, since the public may think the drug company is part of the Raymond group. In Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., 2001 INSC 568, (2002) 2 SCC 147, the Supreme Court upheld an injunction against the use of “Mahendra & Mahendra” as a company name for paper, a field in which Mahindra did not trade.

Conclusion. The injunction should be granted under section 29(4) and in passing off. The plaintiff may also apply under section 16 of the Companies Act, 2013 for a direction to the company to change a name that is identical with or too nearly resembles its registered trade mark.

How this is examined

February 2025: “What is infringement of trade marks? Explain the remedies” and the Raymond problem. January 2026: a note on infringement of trade mark and the T-T problem. August 2024: a note on “deceptive similarity”. For the note on deceptive similarity, use sections 1 and 2 with Corn Products, Amritdhara and the Cadila factors. For infringement, section 29 clause by clause, section 30, and section 135.