Deceptive similarity and infringement of registered trade marks

1. The definition

Section 2(1)(h): 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. The test is likelihood, not proof of actual confusion, and intention to deceive is not required.

2. The tests the Supreme Court has laid down

• Corn Products Refining Co. v. Shangrila Food Products, 1959 INSC 130. “Gluvita” for biscuits was held deceptively similar to “Glucovita” for glucose. The Court looked at the marks as a whole and at the trade connection between glucose and biscuits. A claim that a common element (“Gluco”) was common to the trade needs proof of actual use by others, not mere entries in the register.
• Amritdhara Pharmacy v. Satya Deo Gupta, 1962 INSC 170. The question is to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of “Amritdhara” and “Lakshmandhara” was likely to deceive. Fine etymological distinctions do not matter to him.
• Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 INSC 221. Where the defendant has taken the essential features of the registered mark, infringement is made out, and added matter or a different get-up does not save him. This differs from passing off, where added matter may distinguish.
• K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., 1969 INSC 110. “Sri Andal” was held deceptively similar to “Sri Ambal” for snuff because of phonetic resemblance. Sound matters as much as sight, especially where goods are ordered orally.
• Parle Products v. J.P. & Co., 1972 INSC 31. The court does not place the two wrappers side by side and look for differences. It asks whether the overall impression, with broad and essential features in common, would deceive a person who has only a general recollection of the earlier one.

3. Cadila Health Care v. Cadila Pharmaceuticals (2001)

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 INSC 173, (2001) 5 SCC 73, the two companies that came from the division of the Cadila group sold anti-malarial drugs under “Falcigo” and “Falcitab”. The Supreme Court laid down the factors to be weighed in an action for passing off on an unregistered mark (and used since for infringement too):

1. the nature of the marks: word marks, label marks or composite marks;
2. the degree of resemblance between the marks, phonetically similar and hence similar in idea;
3. the nature of the goods for which they are used;
4. the similarity in the nature, character and performance of the goods of the rival traders;
5. the class of purchasers likely to buy the goods, their education and intelligence, and the degree of care they are likely to exercise;
6. the mode of purchasing the goods or placing orders;
7. any other surrounding circumstances.

The Court added that in medicinal products a stricter approach is needed, because confusion can be dangerous to health. The fact that a drug is sold on prescription does not remove the risk: doctors’ handwriting, pharmacists under pressure and patients with limited literacy make confusion possible. It disapproved the emphasis on differences between marks in S.M. Dyechem v. Cadbury (2000), reaffirming that the question is overall similarity, and it left the dispute to be decided at trial on these principles.

4. The structure of infringement: section 29

Section 29(5) covers use of the mark as a trade name or part of a trade name for the same goods; section 29(6) lists what counts as use (affixing, offering, importing or exporting, using on business papers or in advertising); section 29(8) covers advertising; and section 29(9) covers spoken use where the mark consists of words.

In Renaissance Hotel Holdings v. B. Vijaya Sai, 2022 INSC 70, the defendants used “Sai Renaissance” for hotels. The High Court had refused relief, importing the requirements of section 29(4) (reputation and unfair advantage) into a case under section 29(2). The Supreme Court reversed. Where the mark is identical and the services identical, section 29(3) presumes confusion, and the conditions of section 29(4) are relevant only to dissimilar goods. It also held that section 30(1), which excuses use in accordance with honest practices, does not help a defendant whose use is not honest.

5. Consequences of a deceptively similar mark

1. At application. Refusal on relative grounds (section 11(1)), or on absolute grounds if the mark deceives the public (section 9(2)(a)).
2. At advertisement. Opposition by the earlier proprietor (section 21).
3. On the register. Rectification or removal on the ground that the entry was made without sufficient cause (section 57), unless the later proprietor can show honest concurrent use (section 12) or acquiescence (section 33).
4. In the market. Infringement under section 29, with injunction, damages or account of profits, and delivery up (section 135).
5. Without registration. Passing off (section 27(2)), with the Cadila factors.
6. Criminal. Falsifying a mark includes making a deceptively similar mark (section 102); applying it or selling goods bearing it is punishable (sections 103 and 104).
7. Defences. Limits in section 30, acquiescence (section 33), prior use (section 34), use of one’s own name (section 35), and the rights of a co-registrant (section 28(3)).

6. Similarity, near resemblance and deceptive similarity distinguished

The syllabus asks for the difference between these three expressions and their effects.

• Similarity is the broad, factual question whether two marks share visual, phonetic or conceptual features. Two marks can be similar without any risk of confusion, for example where the shared element is descriptive or common to the trade.
• Near resemblance is the statutory measure of closeness used in section 2(1)(h): the later mark must so nearly resemble the earlier one that confusion is likely. It describes the degree of similarity, judged by the overall impression, not by side-by-side comparison of details.
• Deceptive similarity is the legal conclusion: near resemblance plus likelihood of deception or confusion, judged from the view of the average purchaser with imperfect recollection, taking account of the goods, the class of buyers and the trade channels. In Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 INSC 130, “Glucovita” and “Gluvita” were held deceptively similar on that basis.

Effects. Mere similarity has no legal consequence. Deceptive similarity is a relative ground of refusal (s.11(1)), a ground of opposition (s.21) and rectification (s.57), and an element of infringement under section 29(1) and (2) for marks that are not identical. For an identical mark on identical goods, confusion is presumed (s.29(3)) and no inquiry into deception is needed. For a mark with a reputation used on dissimilar goods (s.29(4)), the test is not confusion but unfair advantage or detriment. A problem answer should identify which category the defendant's mark falls into before applying any test.

How this is examined

For the 2025 question, open with section 2(1)(h), take the cases in chronological order ending with Cadila, then use the table to explain section 29 and Renaissance, and finish with the seven consequences. The comparative box earns credit at LL.M. level. A problem on similar drug names should be solved with the Cadila factors and the stricter standard for medicines.