Rights and liabilities of Trade Mark What is a Deceptive Similarity in Trademark?

Deceptive similarity under trademark law refers to a scenario where one trademark is so similar
In India, trademark owners have significant rights, including exclusive use, the ability to prevent
infringement, and the right to seek legal remedies. They also have liabilities, primarily relating to to another that it is likely to mislead or confuse the public. This term indicates that even though
the responsibility of the owner for actions taken under their trademark. The Trade Marks Act, two marks may not be identical, their resemblance in appearance, sound or meaning could cause
1999 governs these rights and liabilities. consumers to mistakenly associate the marks with each other.

Rights of a Trademark Owner: This potential for confusion suggests that the later mark might be capitalising on the goodwill
 Exclusive Use: The trademark owner has the sole right to use the trademark in connection with and reputation established by the original mark holder. The legal framework, such as Section
the goods or services for which it is registered. 2(1)(h) of the Trademark Act, assesses whether marks are “deceptively similar” by evaluating
 Right to Prevent Infringement: The owner can prevent others from using the trademark or a their phonetic, visual and conceptual likeness.
deceptively similar mark that could cause confusion or mislead consumers. To assess whether two trademarks are deceptively similar, several key factors should be
 Licensing: Trademark owners can grant licenses to others, allowing them to use the trademark considered:
under specific terms and conditions.  Nature and Purpose of Goods: Evaluate the similarity in the nature and purpose of goods
 Assignment: The trademark can be transferred or assigned to another party. offered under the rival trademarks.
 Right to Sue for Infringement: The registered trademark owner can sue for infringement or  Characteristics of the Marks: Examine the nature of each mark, which could include words,
passing off, seeking an injunction to stop the infringement, damages, and/or an accounting of created words, descriptive or non-descriptive names or geographical names.
profits.  Usage of the Marks: Consider the types of goods that are currently associated with the
 Right to Rectification: The owner can seek rectification of the trademark register to correct any trademarks or likely to be associated in the future.
errors or misrepresentations.  Similarity in Mark Features: Assess the degree of phonetic, visual and conceptual similarity
 Right to Renewal: Trademark registrations are valid for 10 years and can be renewed. between the marks, focusing on their essential features.
 Consumer Profile: Analyse the demographic and psychographic characteristics of potential
Liabilities of a Trademark Owner: buyers, including their level of education, intellect and the degree of attention likely to be
 Responsibility for Licensed Use: exercised during their purchasing decision.
 Purchasing Methods: Reflect on the means by which the goods are purchased or orders are
The trademark owner remains responsible for any actions taken by a licensee, even if those
actions infringe the trademark. placed, as this can influence the perception of the marks.
These factors collectively help determine the likelihood of consumer confusion, which is central
 Liability for Unlawful Use:
to identifying deceptive similarity between trademarks.
The trademark owner can be held liable for any unlawful use of the trademark, including
unauthorized use by others.
 Duty of Good Faith: Certification trademarks
Trademark owners have a duty to act in good faith and avoid misleading the public.
A certification trademark is a validation of the quality and standard of the product sold in the
 Liability for Passing Off: market on a commercial scale. It is defined under Section 2(1)(e) of the Trade Mark Act, 1999.
If a trademark owner's actions lead to customers being misled into believing their goods or It provides that a certification mark means a mark capable of distinguishing the goods or services
services are associated with another brand, they can be held liable for passing off. in connection with which it is used in the course of trade which are certified by the proprietor of
 Liability for Unfair Competition: the mark in respect of origin, material, mode of manufacture of goods or performance of
Trademark owners can be held liable for engaging in unfair competition practices, such as services, quality, accuracy or other characteristics from goods or services.
falsely representing their goods or services.

Meaning of passing off

“If a person sells his goods as the goods of another,” then the trademark owner can take action as
this becomes a case of passing off. Passing off is used to protect or safeguard the goodwill
attached to an unregistered trademark. When the trademark has been registered by the owner and Difference between passing off and Infringement of Trademarks:
infringement happens, then it becomes a suit for infringement, but if the trademark has not been
registered by the owner and infringement happens, then it becomes a case of passing off.  Passing off action arises for registered as well as unregistered trademarks while the
infringement is of registered trademark only. The former is based on common law principle
which says that no one has right to use the trademark of the other trader.
The term “passing-off” is not defined in the Trade Marks Act, 1999. Section 27 of the Trade
Marks Act, 1999 acknowledges the trade mark owner’s common law rights to pursue legal action
 Infringement of trademark comes under the statutory right under Trademarks Act, 1999 while
against anybody who misrepresents his goods or services as those of a third party or seeks to
the passing off action is only confined to property in goodwill acquired by the use of mark.
exploit such rights.
 The aggrieved person cannot sue for unregistered trademark rather his remedy is only passing
In Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd, (2001) the Supreme Court of India
off action.
defined “passing-off” as a type of unfair commercial competition or actionable unfair dealing in
which one person, by deceit, seeks to get an economic benefit from the reputation earned by the
 In passing off action, the plaintiff is required to prove that his business has earned certain
other in a particular trade or company.
reputation in the market which is not the case in trademark infringement.
A few key elements must be proven for a passing off action, as maintained by courts in a series  In case of trademark infringement, the plaintiff is restrained from using such deceptively
of judgements, which are listed below: similar mark while in passing off the plaintiff is restrained from selling such articles.

1. Misrepresentation,  The similarity in trademark is enough proof to constitute infringement of trademark while in
2. The defendant must do the conduct in the course of his or her business. passing off the confusion in the minds of public is essential.

3. The plaintiff’s goods and services have been misrepresented to prospective or final  In passing off action, the defendant can escape from his liability if he proves that his goods are
clients. different from that of the plaintiff but in a suit for infringement, the plaintiff needs to prove that
4. Such deception is intended to harm the plaintiff’s company or reputation, and the defendant’s mark is visually of phonetically similar to his trademark. If there is an imitation,
the court considers it as a conclusive proof of infringement of plaintiff’s right.
5. Such conduct creates genuine harm to the plaintiff’s company or reputation