LIST OF ABBREVIATIONS

TRIPS Trade-Related Aspects Of Intellectual Property Rights

WIPO World Intellectual Property Organization

IP Intellectual Property

IPO Intellectual Property Office

IPAB Intellectual Property Appellate Board

EU European Union

EUIPO European Union Intellectual Property Office

EUTMR European Union Trade Mark Regulation

EUTM European Union Trade Mark

TM Trademark

CJEU Court of Justice of the European Union

TMA, 1999 Trade Marks Act, 1999 (Indian Trademark Law)

AI Artificial Intelligence

SC Supreme Court

HC High Court (India)

AIR All India Reporter

SCC Supreme Court Cases (India)

SCR Supreme Court Reports (India)

FMCG Fast Moving Consumer Goods

F. Supp. Federal Supplement (Us)

U.S. United States Reports

iv
C.F.R. Code Of Federal Regulations (US)

LOCF Likelihood of Confusion

e.g. For Example (Exempli Gratia)

i.e. That Is (Id Est)

vs. Versus

Para Paragraph

& And

v
 LIST OF CASES

S. No. Cases
Amar Singh Chawal Wala vs. Shree Vardhman Rice and General Mills 2009 SCC
1.
10 257
American Cynamid Corpn. v. Connaught Laboratories Inc. 231 USPQ 128 (2nd
2.
Cir 1986)
3. Amritdhara Pharmacy v. Satyadeo Gupta 1954 AIR 44
4. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2001 SC 1952
5. Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc Case C-39/97
Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc. Case C-39/97, [1998]
6.
ECR I-5507
7. Clinique Laboratories LLC v. Gufic Limited [(2009) 41 PTC 41 (Del)]
8. Corn Products Refining Co. v. Shangrila Food Products Ltd. 1960 SCR 1 968
9. Evergreen Sweet House VS. Evergreen 2008 ILR DEL 17 1132
10. General Court – MCO (IP) v EUIPO T-461/21
11. Gupta Enterprises v. M/s Gupta Enterprises and Anr. AIR 1998 DELHI 232
12. Gut Springenheide and Tusky Case C-210/96
Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks (AIR 1977
13.
Cal 413)
Intel Corporation Inc. v. CPM United Kingdom Ltd. 252/07, [2009] E.T.M.R. 17
14.
(CJEU)
15. ISKCON vs. Iskcon Apparel Pvt. Ltd. (2020) SCC Online Bom 729
16. ITC Ltd. v. Nestlé India Ltd. 2020 SCC ONLINE MAD 1158
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
17.
AIR 1965 SC 980
18. Kneipp GmbH v. EUIPO – Patou T-157/23
Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV Case C-251/95,
19.
[1997] ECR I-6191
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. AIR
20.
2002 SC 117
21. Michael Kors v. TECOM T-1053/23
22. Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624; AIR 2004 SC 3355

vi
23. Moonshine Technology Pvt. Ltd. v. Tictok Skill Games Pvt. Ltd Case C-383/99 P
24. N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714
Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd. (2018) 9
25.
SCC 183
26. National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1953 AIR 357
27. O2 Holdings Ltd v. Hutchison 3G UK Ltd. Case C-39/97, [1998] ECR I-5507
28. Parle Products (P) Ltd. v. J.P. & Co., Mysore 1972 AIR SC 1359
29. Procter & Gamble Co. v. OHIM Case C-383/99 P
Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel And Others
30.
Supreme Court Of India 2006 AIR SC 3304
31. Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors. 2022 SCC 5 1
32. Ruston & Hornsby Ltd. v. Zamindara Engineering Co. Ltd. 1970 AIR SC 1649
33. Sabel BV v. Puma AG Case C-251/95
34. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. 2004 AIR SC 3540
35. SBL Ltd. v. Himalayan Drug Co. (1997) 17 PTC 540 (Del)
36. Starbucks Corporation vs. Sardarbuksh Coffee & Co. CS (COMM) 1007/2018
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 73 PTC 1
37.
(SC)
38. Windsurfing Chiemsee Produktions v Boots C-109/97

vii
 TABLE OF CONTENTS

S. NO. PARTICULARS PG. NO.

1. DECLARATION i

2. CERTIFICATE ii

3. ACKNOWLEDGEMENT iii

4. LIST OF ABBREVIATIONS iv-v

5. TABLE OF CASES vi-vii

6. TABLE OF CONTENTS viii-x

7. CHAPTERIZATION 1-87

CHAPTER 1: Introduction 1-6

1.1 Introduction (Pg.1)
1.2 Research problem (Pg.2)
1.3 Relevance of the topic (Pg.3)
1.4 Literature review (Pg.3)
1.5 Research Objectives (Pg.4)
1.6 Research Question (Pg.5)
1.7 Research Hypothesis (Pg.5)
1.8 Research Methodology(Pg.5)
CHAPTER 2: India’s Trademark Jurispridence on Likelyhood 7-34
of Confususion
2.1 Trademark Infringement: Legal Framework and Key Concepts
(Pg.7)
2.2 Grounds for Refusal in Trademark Law (Pg.17)
2.3 Overview of the Likelihood of Confusion Test (Pg.23)
2.4 Relationship between Infringement and Grounds for Refusal
(Pg. 27)

viii
2.5 Judicial Interpretation of Confusion in Infringement Cases
(Pg.31)

CHAPTER 3 : The Likelihood of Confusion: Foundations, 35-47

Application, and the Indian Perspective
3.1 Historical Development and Theories behind the Likelihood of
Confusion Test. (Pg.35)
3.2 Purpose and Significance in Trademark Law (Pg.38)
3.3 Factors Affecting Confusion: Similarity of Marks (Pg.40)
3.4 Goods/Services, and the concept of the "average
consumer"(Pg. 41)
3.4 Strength and shortcomings of the Indian Approach (Pg.44)
CHAPTER 4: The European Union’s Holistic Approach 48-59
4.1 Jurisprudence of EUTMR and CJEU (Pg.48)
4.2 The “global appreciation” doctrine (Pg.51)
4.3 Role of the average consumer, imperfect recollection, and
distinctive character (Pg. 53)
4.4 Market and Consumer Perspective (Pg.56)

CHAPTER 5: Comparative Analysis: India vs. EU 60-73

5.1 Doctrinal Differences (Pg. 60)
5.2 Consumer Standard: "Ordinary prudent consumer" (India) vs.
"Average consumer who is reasonably well-informed" (EU).
(Pg.64)
5.3 Approach to Evidence and Market Reality: Which system
better reflects consumer perception? (Pg.67)
5.4 Judicial Flexibility and Predictability (Pg.69)

ix
 CHAPTER 6: Practical Implications and Market Realities 74-83
6.1 Real-World Impact: How the differences affect businesses and
brand protection. (Pg.74)
6.2 Cross-border Enforcement Challenges: Multinational brand
strategy concerns. (Pg.75)
6.3 Role of Market Surveys and Empirical Evidence: Use and
admissibility in each system. (Pg.80)

6.4 Recommendations for India (Pg.81)

CHAPTER 7: Conclusion 84-87
7.1 Summary of Findings (Pg.84)
7.2 The Future of the Likelihood of Confusion Test in Trademark
Law (Pg.85)
7.3 Recommendations for Legal Practice and Policy Development
(Pg.85)
7.4 Closing Remarks (Pg.86)
7.5 Suggestions (Pg.87)
8. BIBLIOGRAPHY 88-90
9. PLAGIARISM CHECKER CERTIFICATE 91-92

x
 CHAPTER 1

1.1 Introduction

In the contemporary global economy, intellectual property (IP) has emerged as a pivotal asset
for businesses and individuals alike. IP encompasses creations of the mind, such as inventions,
literary and artistic works, designs, symbols, names, and images used in commerce. Among
the various categories of IP, trademarks play a particularly vital role. A trademark is a
recognizable sign, design, or expression that identifies products or services of a particular
source from those of others. It acts as a badge of origin, helping consumers distinguish between
competing brands in the marketplace.

Trademarks serve multiple functions they are not only indicators of origin but also symbols of
quality, carriers of goodwill, and instruments of consumer trust. Over time, a trademark can
become a valuable commercial asset, symbolizing the identity and reputation of a business.
The legal protection of trademarks is therefore crucial in ensuring fair competition, preventing
consumer deception, and safeguarding the investments of brand owners.

A special category within trademark law is that of well-known marks. These are marks that
have gained substantial recognition among the general public or relevant sector of the public,
even if they are not registered in a specific jurisdiction. International agreements like the TRIPS
Agreement and national laws, including India’s Trade Marks Act, 1999, recognize and protect
well-known trademarks due to their extensive market presence and consumer familiarity. The
protection of well-known marks ensures that their distinctive character and goodwill are not
unfairly exploited or diluted by other traders.

At the heart of trademark enforcement lies the Likelihood of Confusion (LOC) test.1 This
doctrine assesses whether the use or registration of a mark is likely to cause confusion among
the relevant consumer base regarding the origin of the goods or services. Confusion can arise
due to similarities in the visual appearance, sound, meaning, or overall impression of two

1
Suvrashis Sarkar, History and Evolution of Trademarks in India (Research Paper, University of Mumbai,
Jamnalal Bajaj Institute of Management Studies, November 2016) Volume 6, Issue 11, ISSN 2249-555X.

1
marks. In Indian trademark law, the LOC test is central to two important legal domains:
infringement actions under Section 29 and registration refusals under Section 11 of the Trade
Marks Act, 1999. Its dual role makes it a cornerstone of both trademark enforcement and
regulatory scrutiny.

However, despite its foundational significance, the LOC test in India lacks a codified
framework and is inconsistently applied across courts. Different judicial forums interpret and
weigh various factors such as phonetic, visual, and conceptual similarities, consumer
perception, and market conditions differently. This inconsistency has led to unpredictability in
judicial outcomes, which in turn creates challenges for trademark owners and applicants trying
to protect their rights.

In today’s marketplace, characterized by aggressive branding, global commerce, and digital

platforms, the risk of consumer confusion has grown significantly. Misleading trademarks not
only deceive consumers but also harm the economic interests of genuine brand owners and
compromise fair market competition. Against this backdrop, the present research critically
examines the evolution, judicial application, and limitations of the LOC test in India, with a
view to identifying potential reforms and greater alignment with international standards.

1.2 Research Problem

The central problem this study seeks to explore is the absence of a clear, coherent, and
uniformly applied framework for the Likelihood of Confusion test in Indian trademark
jurisprudence. Although Indian courts have frequently used the LOC test in both infringement
and registration cases, the application of the test remains inconsistent. Judicial decisions often
rely on an array of factors, but there is no consensus on how these factors should be applied or
prioritized. Consequently, similar cases may lead to divergent outcomes depending on the
forum and judicial interpretation involved.

Another issue is the lack of statutory guidance on key concepts such as the "average consumer,"
which is critical in determining confusion. While Indian courts have referred to the idea of
consumer perception, there is no settled judicial or legislative definition of who this consumer
is and how their perception should be evaluated. By contrast, jurisdictions like the European
Union employ a more systematic approach, notably the “global appreciation” test that evaluates
the mark’s impression as a whole in the mind of the average consumer.

2
These shortcomings introduce legal uncertainty and hinder effective enforcement of trademark
rights. They also complicate brand strategy for businesses, especially multinational
corporations, seeking to establish or defend trademarks in the Indian market. Therefore, a
structured and predictable LOC framework is not only a matter of legal clarity but also essential
for economic efficiency and consumer protection.

1.3 Relevance of the Topic

This topic is of great relevance in the current era where trademarks have become invaluable
economic assets. The rise of brand-driven commerce, coupled with the advent of e-commerce,
social media marketing, and transnational business operations, has made trademarks
indispensable for commercial identity. In this context, the effectiveness of the LOC test has
direct implications on how well trademarks are protected from misuse and imitation.

Moreover, India is witnessing a significant increase in trademark registrations and litigation.

Cases involving deceptive similarity, trade dress infringement, domain name disputes, and
cybersquatting are on the rise. These trends highlight the need for a robust, fair, and predictable
LOC mechanism that can efficiently address modern challenges in the trademark ecosystem.

The study also has significant policy implications. Strengthening the LOC test can enhance
judicial coherence, improve the quality of adjudication, and ensure that Indian trademark law
is in step with global best practices. As India continues to position itself as a hub for innovation
and investment, improving the legal regime around trademark confusion will contribute to a
more business-friendly and consumer-safe environment.

1.4 Literature Review

The judicial and academic literature on the LOC test in India indicates an evolving but still
fragmented body of knowledge. Early decisions like Amritdhara Pharmacy v. Satyadeo
Gupta2focused on phonetic similarities and emphasized how the average Indian consumer, with
imperfect recollection, might be confused by similar-sounding marks. These foundational ideas
paved the way for future elaborations.

2
1954 AIR 44

3
A landmark case, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.3, offered a more
detailed framework for assessing confusion. The Supreme Court listed multiple factors
including the nature of the goods, class of purchasers, and the mode of purchasing. This multi-
factor approach was inspired by foreign jurisprudence but lacked binding clarity on the relative
importance of each factor.

Scholars like P. Narayanan have highlighted the doctrinal weaknesses of the Indian system,
noting the absence of a statutory definition of the LOC test. Comparative analyses, such as
those by Vikas Vashishth, point out the divergence between Indian and international
approaches, especially with regard to the structured tests used in the EU and US. The EU’s
"global appreciation" test and the US’s multifactor balancing test provide clearer and more
predictable methods.

More recent legal commentaries continue to criticize the discretionary and often subjective
nature of Indian LOC assessments. While the Trade Marks Act, 1999 incorporates provisions
that imply the use of the LOC test, such as Sections 11 and 29, the lack of a statutory framework
or clear judicial precedent leads to interpretive variability.

1.5 Research Objectives

The objectives of this research are as follows:

1. To trace the historical and theoretical evolution of the Likelihood of Confusion test in
Indian trademark law.
2. To examine the application of the LOC test by Indian courts in both infringement and
registration refusal cases.
3. To critically analyze the factors used in determining confusion and assess their
consistency.
4. To compare the Indian approach with that of the European Union and the United States.
5. To identify doctrinal and practical shortcomings in the Indian application of the LOC
test.
6. To propose a standardized framework for evaluating the likelihood of confusion in
India.

3
AIR 2001 SC 1952

4
1.6 Research Question

The central research question guiding this dissertation is:

 How is the Likelihood of Confusion test applied in Indian trademark law, and to what
extent does it align with international standards and protect the interests of consumers
and trademark owners?

Supporting sub-questions include:

 What are the key judicial and legislative principles governing the LOC test in India?
 How consistent is the judicial application of the test?
 What are the theoretical justifications and practical challenges in using this test?
 How does India’s application of the LOC test compare to the EU’s “global
appreciation” approach or the US’s multifactor analysis?

1.7 Research Hypothesis

The research is premised on the following hypothesis:

 The application of the Likelihood of Confusion test in Indian trademark law is

inconsistent and inadequately structured, which undermines the effectiveness of
trademark protection and causes unpredictability in judicial outcomes.

This hypothesis will be tested through doctrinal analysis and case review, with reference to
international comparatives.

1.8 Research Methodology

This study adopts a qualitative and doctrinal methodology to explore the conceptual and
practical dimensions of the LOC test. The research primarily involves the interpretation of
statutes, analysis of landmark and recent judicial decisions, and comparative study of foreign
legal frameworks. Academic literature, case law, legal commentaries, and official trademark
registration data will also be examined.

Comparative insights from the European Union and the United States will help identify best
practices and frameworks that can be contextually adapted for India. The goal is not only to

5
critique the current Indian approach but also to propose a reform-oriented model that offers
clarity, consistency, and effectiveness. This research is expected to contribute to academic
scholarship, legal practice, and policy formulation in the domain of trademark law in India.

6
 CHAPTER 2

2.1 Trademark Infringement: Legal Framework and Key Concepts

Introduction

Trademark infringement refers to the unauthorized use of a trademark or a mark that is

confusingly similar to an existing registered trademark. This can cause confusion among
consumers regarding the source, sponsorship, or affiliation of goods or services. Trademark
law aims to protect the goodwill and reputation that businesses build through their brand names,
logos, and other identifiers.

Trademark law exists to protect the unique identifiers of goods or services, ensuring that
consumers can distinguish between products or services offered by different companies. These
identifiers which may include brand names, logos, symbols, and even colors or sounds
represent the goodwill, reputation, and trust that a company has built with its customers. The
law protects these identifiers to prevent unauthorized parties from benefiting unfairly from this
goodwill.

Trademark Infringement

Trademark infringement occurs when another party uses a mark that is identical or confusingly
similar to a registered trademark without authorization, and in a way that causes or is likely to
cause confusion among the public. This confusion might involve the source, sponsorship, or
affiliation of the goods or services.

When someone infringes on a trademark, it threatens to mislead consumers, potentially causing

confusion about the origin of goods or services, which can damage both the brand’s reputation
and consumer trust. Consumer confusion plays a pivotal role in trademark infringement cases,
serving as a fundamental criterion in determining whether an unauthorized use of a trademark
is likely to mislead consumers4. Trademark law provides exclusive rights to the owners of
registered marks to prevent others from using a mark that could create confusion, mistake, or
deception.

4
“The Role of Consumer Confusion in Trademark Infringement Cases,” Indian Journal of Integrated Research
in Law, Vol. V, Issue II, pp. 1164–1172 (2025).

7
Infringement occurs when a party uses a mark that is identical or confusingly similar to an
existing trademark in a way that is likely to confuse or deceive consumers5. Several key
elements are involved in determining whether infringement has occurred:

Similarity of Marks: A court will assess whether the mark used by the defendant is
substantially similar in appearance, sound, or meaning to the plaintiff’s registered mark. The
more similar the marks are, the more likely there is to be confusion.

Similarity of Goods/Services: If the defendant is using the mark on products or services that
are similar to the plaintiff's, there is a higher likelihood of consumer confusion. For instance,
if two companies use similar marks for competing products, consumers might mistakenly
believe the products come from the same source.

Likelihood of Confusion: This is the key test in determining infringement. Courts examine
whether the average consumer would be confused, assuming they encounter the marks in the
marketplace. Factors such as the nature of the products, the strength of the trademark, and how
the marks are marketed will be considered.

Market Context: The context in which the marks are used (e.g., geographical location,
consumer channels, and actual usage) will be evaluated to assess whether consumers are likely
to make a connection between the two brands.

Confusion leading to Trademark Infringement

Trademark infringement cases typically centre around the risk of confusion in the following
ways:

Source Confusion: The most common form of confusion occurs when consumers mistakenly
believe that the goods or services from one company are affiliated with or originate from
another. For example, if a well-known shoe brand's logo is closely mimicked by another
company, consumers may assume that the second company’s shoes are made by or endorsed
by the original brand.

Sponsorship Confusion: This occurs when consumers think that one product is endorsed by
or associated with a well-known company when it is not. For example, a third-party product

5
"The Concept of Deceptive Similarity: Law & Public Policy" – Manupatra

8
using a famous trademark might lead consumers to believe the brand has authorized or is
sponsoring it.

Affiliation or Connection Confusion: This arises when consumers believe that two businesses
are affiliated, when in fact they are not. For instance, if a small local restaurant uses a logo
similar to that of a large chain, customers might assume the restaurant is part of the larger chain
or has some affiliation with it.

Intent to deceive is not a requirement for trademark infringement, and the court can grant reliefs
such as injunctions to protect the rights of trademark owners. It is essential for businesses to
understand the legal framework and take necessary measures to safeguard their trademarks in
India.6

Infringement as per Trademark Act 1999

The Trademark Act, 1999 (also known as the Indian Trademark Act, 1999) is the primary
legislation governing the registration, protection, and enforcement of trademarks in India. The
Act seeks to safeguard the interests of consumers and businesses by providing a legal
framework for protecting trademarks, which are crucial in identifying and distinguishing goods
or services from one source to another.

Definition and Scope

As per Section 29 of the Trademark Act, 1999, infringement occurs when:

 A person, who is not the registered proprietor, uses an identical or deceptively similar
mark in relation to goods or services for which the trademark is registered.

 Such use is likely to cause confusion among consumers or take unfair advantage of the
reputation of the registered trademark.

In simple words, infringement occurs when an unauthorized person uses a mark that is identical
or deceptively similar to a registered trademark for the same or related goods/services. This
unauthorized use can mislead consumers into believing the products originate from the
registered proprietor, causing confusion in the market. Additionally, if the infringing mark

6
Aravamudhan G. Nithin K., “Trademark Infringement in India: Analysis of Cases and Legal Implications,”
International Journal of Advanced Legal Research, Vol. 3, Issue 4 (2022).

9
takes unfair advantage of the established reputation of the registered trademark or harms its
distinctiveness, it is considered an infringement. The law protects brand identity and prevents
misuse that may damage the goodwill or commercial value of the original trademark.

Trademark infringement applies to both identical and deceptively similar marks, ensuring
comprehensive protection for brand owners against any unauthorized use that may mislead
consumers. If a third party uses a mark that is an exact replica or one that closely resembles a
registered trademark in a way that creates confusion or an association with the original brand,
it constitutes infringement. This broad legal safeguard helps maintain the distinctiveness,
goodwill, and market reputation of established trademarks while preventing unfair competition.
By covering both identical and deceptively similar marks, trademark laws provide businesses
with a strong legal framework to protect their brand identity.

Key Elements of Infringement

To prove trademark infringement under Indian law, particularly under the Trademark Act,
1999, certain essential elements must be established. These elements help courts determine
whether an unauthorized use of a trademark has violated the exclusive rights of the registered
owner. The following factors are crucial in proving trademark infringement:

1. Registered Trademark

The plaintiff must establish ownership of a validly registered trademark under the Trademark
Act, 1999. Trademark protection in India applies only to registered marks, meaning that if a
mark is unregistered, the owner may have to seek remedies under the law of passing off instead
of infringement. A registered trademark grants its owner exclusive rights to use the mark
concerning the goods or services for which it is registered. The registration serves as prima
facie evidence of ownership, making it easier for the trademark holder to enforce their rights
against infringers.

2. Unauthorized Use

For an infringement claim to succeed, the defendant must have used the registered mark
without obtaining proper authorization from the rightful owner. Unauthorized use includes
displaying the mark on products, packaging, advertisements, or promotional materials without
consent. Even if the defendant does not directly copy the mark but still uses a name, logo, or

10
symbol that is deceptively similar, it may amount to trademark infringement. Unauthorized use
also extends to digital platforms, such as websites, social media, and online marketplaces,
where infringing content is displayed to mislead consumers.

3. Similarity of the Marks

Trademark infringement occurs when the infringing mark is either identical or deceptively
similar to the registered trademark. Identical marks are exact replicas of the original, whereas
deceptively similar marks resemble the registered mark in a way that an ordinary consumer
may confuse them for being associated with the registered owner. The assessment of similarity
is based on various factors such as visual resemblance, phonetic similarity, meaning, and
overall commercial impression. Even slight differences may not be enough to avoid
infringement if the overall similarity creates confusion in the minds of consumers.

For example, if a company uses "TATAA" for automobiles, it could be considered deceptively
similar to "TATA", leading to infringement. Similarly, a brand using a logo that closely
resembles the Nike swoosh may also face legal consequences. Courts generally compare the
marks in their entirety and consider how an average consumer perceives them.

4. Likelihood of Confusion

The most critical element in proving trademark infringement is demonstrating a likelihood of

confusion among consumers. If the unauthorized use of a similar mark causes consumers to
mistakenly believe that the infringing product or service is connected to, endorsed by, or
affiliated with the original brand, it constitutes trademark infringement. Confusion can arise in
various ways:

Direct Confusion: Consumers may purchase the infringing product thinking it is from the
original brand.

Indirect Confusion: Consumers may believe there is a business relationship or sponsorship

between the two brands, even if they recognize the difference.

Trademark infringement arises when a party uses a mark that is identical or deceptively similar
to a registered trademark without authorization, in a manner likely to cause confusion among
consumers regarding the source, affiliation, or sponsorship of the goods or services. The

11
primary objective of trademark law is to protect consumer interests and the goodwill associated
with a mark. Indian courts have consistently emphasized the importance of preventing such
confusion, particularly through the "likelihood of confusion" test. In Cadila Health Care Ltd.
v. Cadila Pharmaceuticals Ltd.7, the Supreme Court laid down comprehensive guidelines for
assessing deceptive similarity, stressing the need for a holistic evaluation of consumer
perception. This approach was reinforced in Renaissance Hotel Holdings Inc. v. B. Vijaya
Sai,8where the Court clarified that confusion is to be presumed in cases involving identical
marks and goods. Earlier, in Amritdhara Pharmacy v. Satyadeo Gupta,9 the Court recognized
that even phonetic similarity can mislead ordinary consumers, underscoring the preventive and
protective nature of trademark law.

Likelihood of confusion is often assessed based on factors such as the similarity of the marks,
the similarity of the goods/services, the strength of the original mark, and actual instances of
confusion reported by consumers. Courts may also consider how the trademarks are used in
advertising, packaging, and sales channels.

Establishing trademark infringement under Indian law requires proving that a registered
trademark has been used without authorization in a way that is identical or deceptively similar
to the original, resulting in a likelihood of consumer confusion. These elements help protect
businesses from unfair competition and ensure that consumers are not misled into purchasing
counterfeit or unauthorized products. The Indian legal system provides strong protection for
trademark owners by enforcing strict penalties against infringers and preserving the integrity
of registered trademarks in the marketplace.

Legal Provisions under the Trademark Act 1999

Section 29: Acts Constituting Infringement

1. Use of Identical or Similar Marks (Section 29(1) & 29(2)

Under Section 29(1), a trademark is infringed when an unauthorized person uses a mark that is
identical or deceptively similar to a registered trademark concerning the same goods or
services.

7
AIR 2001 SC 1952
8
“Supreme Court Clarifies That Likelihood of Confusion Is to Be Presumed in Infringement Actions Involving
Double Identity,” World Trademark Review (2022).
9
1954 AIR 44

12
  If a competitor or any third party copies or closely resembles a registered mark, it can lead
to confusion among consumers.

 The key test is whether an average consumer, with imperfect recollection, may mistakenly
associate the infringing mark with the registered trademark.

 Even if the entire mark is not copied, infringement may occur if the similarities cause
confusion in the minds of consumers.

Under Section 29(2), infringement also applies when:

 The marks are similar in appearance, sound, or meaning.

 The goods or services are similar or identical.

 The public is likely to be deceived or confused due to this similarity.

2. Use in Advertising, Trade, and Promotion (Section 29(6))

Under Section 29(6), trademark infringement extends beyond product labelling and includes:

 Use in business documents and correspondence (e.g., invoices, brochures).

 Use in advertisements, whether digital or traditional.

 Use on packaging, even if the infringing product is not yet sold.

 Online and social media promotions that misuse a registered mark.

The law recognizes that advertising plays a crucial role in brand identity, and unauthorized
use of a trademark in promotional materials can mislead consumers and dilute brand value.10

Example:
A company selling counterfeit perfumes under the name "Gucci" in online ads would be
infringing, even if the product itself never reaches consumers.

10
“Supreme Court Clarifies That Likelihood of Confusion Is to Be Presumed in Infringement Actions Involving
Double Identity,” World Trademark Review (2022).

13
3. Dilution of Famous Trademarks (Section 29(4)

Even if an infringing mark is used for unrelated goods or services, it can still be considered
infringement if:

 The registered trademark is well-known or has a strong market presence.

 The use of the infringing mark harms the reputation or distinctiveness of the famous mark.

 The public may associate the well-known brand with the infringing product, leading to
tarnishment or dilution.

Example:
Using the name “Mercedes" for a brand of shoes could dilute the exclusivity and reputation of
the luxury automobile brand, even though shoes and cars are unrelated products..

4. Use of Trademark in a Domain Name (Cybersquatting)

Cybersquatting occurs when a person:

 Registers, uses, or sells a domain name that is identical or similar to a famous brand.

 Attempts to mislead internet users by directing them to a website unrelated to the original
brand.

 Demands money from the rightful trademark owner in exchange for transferring the
domain.

Example:
If someone registers "nikeindia.com" without authorization from Nike, it could be an act of
trademark infringement and cybersquatting. The rightful brand owner can take legal action to
reclaim the domain name. Infringement in the complexities arising from trademark
infringement in the digital space, specifically focusing on domain name disputes under Indian
law.11 Indian courts have ruled in favour of trademark owners in such cases, recognizing the
impact of online brand misuse.

11
Kumar, Abhishek. “Trademark and Domain Name Infringement: Legal Challenges and Remedies in India,”
Indian Journal of Intellectual Property Law, Vol. 12, Issue 1, 2023, pp. 45–67.

14
5. Comparative Advertising & Trademark Use (Section 30)

Comparative advertising is legal if it is fair and does not mislead consumers. However, under
Section 30, it becomes infringement if:

 It unfairly compares one product with another.

 It misrepresents facts to make one brand seem superior.

 It damages the reputation of the competitor’s brand.

Example:
If an ad for Brand X toothpaste falsely claims that Brand Y causes cavities while Brand X is
100% safe, it could lead to legal action under Section 30.

The law allows fair competition but prohibits misleading, defamatory, or deceptive
comparisons in advertising.

The Trademark Act, 1999, provides strong protection against trademark infringement. Section
2912 covers a broad range of violations, from the unauthorized use of similar marks to digital
offenses like cybersquatting. Section 3013 ensures that advertising remains ethical and does not
misuse another brand’s reputation. These legal provisions help safeguard both business and
consumers ensuring fair competition and maintaining brand integrity in the marketplace.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. 14

In this landmark case, the Supreme Court emphasized the need for a stringent approach when
assessing the likelihood of confusion in pharmaceutical trademarks under Sections 11 and 29
of the Trade Marks Act, 1999. The Court outlined several factors to consider, including the
nature of the goods, the class of purchasers, and the mode of purchasing. It highlighted that
even minor phonetic similarities could lead to confusion, especially among semi-literate or
illiterate consumers. The Court rejected the argument that prescription-only drugs mitigate
confusion risks, noting that errors can occur due to miscommunication among medical
professionals. The judgment underscored that public health considerations necessitate a higher

12
Infringement of registered trademarks.
13
Limits on effect of registered trade mark.
14
AIR 2001 SC 1952

15
standard of scrutiny to prevent any potential confusion between medicinal products. This case
set a precedent for adopting a more cautious approach in trademark disputes involving health-
related goods.

ITC Ltd. v. Nestlé India Ltd.15

In this case, the Delhi High Court examined the likelihood of confusion concerning the trade
dress of packaged food products under Section 29(2) of the Trade Marks Act, 1999. ITC alleged
that Nestlé's 'Maggi Atta Noodles' packaging was deceptively similar to its 'Sunfeast Yippee!'
noodles. The Court reiterated that the assessment must be holistic, focusing on the overall
impression rather than dissecting individual elements. It emphasized that in fast-moving
consumer goods (FMCG), where purchasing decisions are made quickly, even subtle
similarities can cause confusion. However, the Court concluded that the overall packaging and
branding of the two products were sufficiently distinct to avoid actionable confusion. This
judgment highlighted the importance of evaluating trade dress in its entirety and reinforced the
principle that minor similarities do not necessarily constitute deceptive similarity.

Amritdhara Pharmacy v. Satyadeo Gupta16

Though predating the Trade Marks Act, 1999, the Supreme Court's decision in this case remains
pertinent to the modern interpretation of the likelihood of confusion. The Court held that in
evaluating deceptive similarity, marks must be considered as a whole, not dissected into
individual components. It stressed that phonetic similarity plays a crucial role, especially for
products targeted at ordinary or illiterate consumers. The Court applied the test of an average
consumer with imperfect memory, focusing on the overall impression rather than technical
differences. It concluded that 'Amritdhara' and 'Lakshmandhara', though not identical, were
deceptively similar due to their phonetic structure and the nature of the products. This decision
laid the groundwork for the Indian approach to the likelihood of confusion, influencing
subsequent interpretations under the Trade Marks Act, 1999.

15
2020 SCC ONLINE MAD 1158
16
1954 AIR 44

16
 2.2 Grounds for Refusal in Trademark Law

Introduction

The Trade Marks Act, 1999, establishes a comprehensive legal framework governing the
registration and protection of trademarks in India. Within this framework, the Act specifies
particular grounds on which an application for trademark registration may be denied. These
grounds for refusal are explicitly enumerated under Sections 9 and 11 of the legislation and are
systematically classified into two primary categories: absolute grounds for refusal and relative
grounds for refusal. Absolute grounds pertain to the inherent characteristics of the trademark
itself, such as lack of distinctiveness, deceptive nature, or conflict with public policy. On the
other hand, relative grounds for refusal primarily focus on the potential for conflict with pre-
existing trademark rights, ensuring that new registrations do not infringe upon or create
confusion with earlier registered trademarks. When applying for trademark registration, it is
essential to navigate through the absolute and relative grounds of objection to ensure that your
trademark is eligible for protection. The absolute and relative grounds are criteria used by
trademark registries to evaluate the distinctiveness and uniqueness of a mark. Understanding
these grounds is crucial for a successful trademark registration process.17

Section 9 – Absolute Grounds of Refusal

The absolute grounds for refusal of trademark registration under Section 9 of the Trade Marks
Act, 199918 pertain to the intrinsic nature of the mark itself. These grounds ensure that only
distinctive and non-deceptive trademarks are granted protection while preventing
monopolization of generic or offensive terms. A trademark will be refused registration if it falls
under any of the following categories:

1. Lack of Distinctiveness (Section 9(1)(a))

One of the fundamental principles of trademark law is that a trademark must be capable of
distinguishing the goods or services of one entity from those of another. Marks that are
generic or merely descriptive of the goods or services they represent cannot be registered

17 Juyal, Sudhanshu. “Sections 9 and 11 of Indian Trademark Registry: Grounds for Refusal of Registration,”
LinkedIn Pulse, 13 April 2025. Available at: https://www.linkedin.com/pulse/sections-9-11-indian-trademarks-
registry-grounds-refusal-juyal.
18 Absolute grounds for refusal of registration.

17
 unless they have acquired distinctiveness through extensive use and recognition by the
public.

Example: A term like "Best Rice" for selling rice would be refused, as it is merely a
laudatory and descriptive phrase that does not differentiate one seller’s rice from another’s.

Exception: If a descriptive mark gains a secondary meaning through long-term and

exclusive use, it may be eligible for registration. For example, "Apple" was originally a
common word but acquired distinctiveness as a brand name in the technology sector.

2. Marks Devoid of Distinctive Character (Section 9(1)(b))

Marks that consist of common words, shapes, or designs that do not inherently distinguish
the applicant’s goods or services from others in the market are not registrable.

Example: The mere shape of a bottle for a beverage would not qualify unless it has a
distinctive and unique design that sets it apart. Similarly, generic fonts or simple geometric
shapes that do not serve as identifiers of a brand will not be protected.

Exception: If a mark that lacks distinctiveness is used extensively in commerce and

consumers begin associating it with a particular brand, it may be granted protection under
the principle of acquired distinctiveness.

3. Marks that are Misleading or Deceptive (Section 9(2)(a))

A trademark will be refused if it is likely to mislead or deceive consumers regarding the

quality, nature, or geographical origin of the goods or services it represents. This provision
protects consumers from false advertising and ensures that trademarks maintain credibility
in the marketplace.

Example: A trademark that includes the word "Organic" for a product that does not meet
organic certification standards would be misleading and therefore refused.

Example: A trademark suggesting a product is manufactured in a certain place (e.g., "Swiss

Chocolate") when it is not actually made in Switzerland would be deceptive.

Objective: This ground aims to prevent unfair trade practices and consumer deception.

18
4. Marks Contrary to Public Order or Morality (Section 9(2)(b))

Trademarks that violate public order, offend moral sensibilities, or promote unlawful
activities are strictly prohibited. The purpose of this provision is to prevent offensive or
obscene marks from entering the marketplace.

Example: A trademark containing vulgar, obscene, or offensive words, racial slurs, or

content promoting hatred or violence would be denied registration.

Example: A mark that promotes illegal activities, such as drug use or terrorism, would be
considered contrary to public order.

Global Perspective: Many countries follow similar restrictions, ensuring that trademarks
do not contradict ethical and moral standards.

5. Use of Generic or Common Terms (Section 9(1)(c))

A mark that consists exclusively of terms that have become common or generic in trade
cannot be registered. Allowing the registration of such terms would unfairly restrict
competitors from using necessary, industry-standard language.

Example: The word "Escalator" was originally a trademark but lost its protection because
it became the generic term for moving staircases.

Example: "Aspirin" was once a registered trademark but became a generic term for
acetylsalicylic acid.

Objective: This rule ensures fair competition and prevents businesses from monopolizing
everyday language.

6. Prohibited Symbols or Names (Section 9(2)(d))

Certain marks containing national symbols, emblems, flags, or religious insignia may be
refused registration to protect national integrity and religious sentiments.

Example: The use of the Indian national emblem, the Ashoka Chakra, or the national flag
as part of a trademark would not be permitted.

19
 Example: Religious symbols such as the cross, crescent, or Om, if used in a way that could
mislead consumers or cause offense, may be denied registration.

Legal Basis: The Emblems and Names (Prevention of Improper Use) Act,19prohibits the
commercial use of specific symbols and names associated with the government or national
identity.

The absolute grounds for refusal under Section 9 of the Trade Marks Act, 1999, aim to maintain
the integrity of the trademark system by ensuring that only distinctive, non-deceptive, and
morally acceptable trademarks are granted protection. By preventing the registration of generic,
misleading, or offensive marks, these provisions safeguard both consumer interests and fair
competition in the marketplace.

Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks 20

In this case, the Calcutta High Court addressed the registrability of the trademark "SIMLA" for
cigarettes. The Registrar had refused registration, citing that "SIMLA" is a well-known
geographical location and thus falls under the absolute grounds for refusal as per Section
9(1)(b) of the Trade Marks Act, 1999. The Court upheld this decision, emphasizing that
geographical names, unless they have acquired distinctiveness, are not registrable as
trademarks. This case underscores the principle that trademarks consisting solely of
geographical terms, which are descriptive of the origin of goods, are not inherently distinctive
and are thus barred from registration under Section 9(1)(b).

SBL Ltd. v. Himalayan Drug Co. 21

In this case, the Delhi High Court examined whether the term "LIV" in the trademark "LIV.52"
was distinctive. The Court held that "LIV" is a common abbreviation for "liver" and is widely
used in the pharmaceutical industry to denote liver-related products. As such, it was considered
generic and lacking distinctiveness, making it ineligible for exclusive trademark protection
under Section 9(1)(c). This judgment highlights that terms which have become customary in
the current language or in bona fide and established practices of the trade are not registrable as
trademarks.

19
1950
20
(AIR 1977 Cal 413)
21
(1997) 17 PTC 540 (Del)

20
 Section 11: Relative Grounds for Refusal

Relative grounds for refusal mentioned under Section 1122 of the Trademarks Act, 1999 focus
on preventing conflicts between new trademarks and existing trademarks or prior rights. These
provisions safeguard brand identity and consumer trust while preventing market confusion and
unfair competition.

1. Likelihood of Confusion with an Earlier Trademark (Section 11(1))

A trademark application will be refused if the proposed mark is identical or significantly similar
to an already registered trademark for the same or similar goods/services. This prevents
consumer confusion and protects established brand identities.

Example: A new brand called "Nikee" for sports shoes would likely be refused due to its
similarity to the well-known brand Nike.

2. Protection of Well-Known Trademarks (Section 11(2))

A trademark may be refused registration if it is similar to a well-known trademark, even if it is

for unrelated goods or services. This provision prevents new brands from free-riding on the
goodwill of established trademarks.

Example: Using the name "Coca-Cola" for a clothing brand may be refused, even though the
original brand is associated with beverages, as it exploits the reputation of a globally recognized
brand.

3. Earlier Rights (Section 11(3))

Trademark law recognizes the principle of prior use, meaning that if another party has acquired
rights in an unregistered mark through extensive and long-standing commercial use, a new
registration for a conflicting mark may be refused.

22
Relative grounds for refusal of registration.

21
Example: A small local bakery using the name "Golden Bakes" for several decades without
registration may prevent another company from registering the same name if it can prove its
prior rights.

4. Trademark with an Identical Name of a Living Person (Section 14)

If a trademark contains the name of a living person, registration will be refused unless explicit
consent is obtained from that individual. This provision prevents unauthorized use of personal
names for commercial benefit.

Example: Registering a trademark called "Amitabh Bachchan Perfumes" without obtaining

permission from Amitabh Bachchan would be prohibited.

The Trade Marks Act, 1999, establishes a balanced approach to trademark registration by
ensuring that marks meet fundamental criteria of distinctiveness, honesty, and fair competition.

1. Absolute grounds for refusal under Section 9 focus on protecting consumers and market
integrity by preventing generic, deceptive, offensive, or legally restricted marks from
being registered.

2. Relative grounds for refusal under Section 11 protect existing trademark owners and
prevent consumer confusion by ensuring that new marks do not infringe on prior rights
or exploit the goodwill of well-known trademarks.

By enforcing these principles, the Act upholds the credibility of trademarks as valuable
business assets while safeguarding public interest and fair market practices.

Starbucks Corporation vs. Sardarbuksh Coffee & Co. 23

The Delhi High Court examined the similarity between "Starbucks" and "Sardarbuksh" in the
context of coffeehouse services. The Court found that the defendant's use of a similar logo and
name could cause confusion among consumers, given the global reputation of Starbucks. It
applied the test of an average consumer with imperfect recollection and held that the
similarities were likely to deceive. The defendant was directed to change its name to "Sardarji-

23
(2018)

22
Bakhsh Coffee & Co." This case reinforced the protection of well-known trademarks under
Section 11(2) against similar marks in the same industry.

ISKCON vs. Iskcon Apparel Pvt. Ltd. (2020) 24

The Bombay High Court recognized "ISKCON" as a well-known trademark under Sections
11(6) and 11(7). The plaintiff demonstrated extensive use and recognition of the mark globally.
The defendant, using "ISKCON" in its company name, was found to be infringing upon the
plaintiff's rights. The Court granted a permanent injunction against the defendant, highlighting
the importance of protecting well-known trademarks from unauthorized use, even in different
classes of goods or services.

Amar Singh Chawal Wala vs. Shree Vardhman Rice and General Mills 25

The Delhi High Court dealt with the similarity between "Lal Qilla" and "Hara Qilla" trademarks
for rice products. The Court held that the use of the word "Qilla" (meaning fort) in both marks,
along with similar packaging, could cause confusion among consumers. It emphasized that the
dominant feature of a mark plays a crucial role in assessing similarity. This case illustrated that
even if certain elements differ, the overall impression can lead to confusion, warranting refusal
under Section 11(1).

2.3 Overview of the Likelihood of Confusion Test

Introduction

The Likelihood of Confusion Test is a fundamental principle in trademark law used to

determine whether one trademark is too similar to another, potentially leading consumers to
believe they come from the same source.

The concept of Likelihood of Confusion in trademark law refers to the possibility that
consumers may mistake one trademark for another, assuming that both originate from the same
company or are somehow related. This principle is a fundamental aspect of trademark
infringement cases, as it helps protect the interests of both businesses and consumers. If two

24
SCC Online Bom 729.
25
2009 SCC 10 257

23
trademarks are so similar that they create confusion in the marketplace, legal actions can be
taken to prevent consumer deception and unfair competition.

The likelihood of confusion test plays a crucial role in determining whether a new trademark
is too similar to an existing registered trademark, leading to potential consumer confusion. This
test is applied in both:

1. Infringement cases under Section 29 of the Trade Marks Act, 1999, where an already
registered trademark owner claims that another party is using a confusingly similar
mark.

2. Refusal of registration under Section 11, where the Registrar assesses whether a new
trademark application is likely to create confusion with an existing trademark.

The primary objective of this test is to protect consumers from deception and ensure that
businesses do not gain an unfair advantage by adopting marks that resemble established
brands.26 Courts and trademark authorities analyze multiple factors to determine whether
confusion is likely.

Key Factors Considered in the Likelihood of Confusion Test

1. Similarity of the Marks (Visual, Phonetic, and Conceptual)

One of the most important aspects of the likelihood of confusion test is the degree of similarity
between the competing trademarks. The similarity is assessed in three key ways:

 Visual Similarity – Whether the two marks look alike in terms of design, font, color
scheme, or overall appearance.

 Phonetic Similarity – Whether the pronunciation of the marks sounds similar, potentially
leading to confusion when spoken.

 Conceptual Similarity – Whether the marks convey the same idea, meaning, or impression.

26
Sharma, Yuvraj, and Patil, Jatin. “Understanding the Concept of Phonetic and Visual Similarity Vis-A-Vis To
Letter Trademarks Through Judicial Precedents,” DME Journal of Law, Vol. 4, Issue 2, 2023, pp. 40–47.
Available
at:https://www.researchgate.net/publication/380779164_Understanding_the_Concept_of_Phonetic_and_Visual_
Similarity_Vis-A-Vis_To_Letter_Trademarks_Through_Judicial_Precedents.

24
Example:

Pepsi vs. Popsi – These names are visually and phonetically similar, making confusion likely,
especially for beverage products.

2. Similarity of Goods or Services

Even if two trademarks are visually or phonetically similar, the likelihood of confusion depends
on whether they are used for identical or closely related products/services. The more closely
related the goods or services, the higher the chance of confusion.

Example:

 Dove (soap) vs. Dove (chocolate) – Despite using the same name, these products belong
to completely different categories (personal care vs. confectionery), making confusion
unlikely.

 Dove (soap) vs. Dove (shampoo) – Since both products fall under personal care, consumers
might assume they come from the same company, increasing the likelihood of confusion.

3. Strength and Reputation of the Earlier Mark

The reputation and distinctiveness of an existing trademark significantly impact the likelihood
of confusion. Well-known trademarks enjoy greater protection under Section 11(2) of the Trade
Marks Act.

Example:

 A new brand called McDowell’s Fried Chicken would likely be refused because
McDonald’s is a globally well-known fast-food chain. Consumers might assume an
association between the two, even if they offer slightly different products.

 A startup trying to use GoogleTech for a technology-related service is likely to be rejected

because Google is a famous brand, and the addition of "Tech" does not remove the
association.

4. Consumer Perception and Market Conditions

25
The level of attention and care exercised by consumers when purchasing goods/services also
affects the likelihood of confusion.27

For low-cost or impulse purchases, such as snacks or personal care items, consumers are less
likely to scrutinize trademarks closely, making confusion more probable. For high-value or
specialized purchases, such as luxury cars, real estate, or financial services, consumers are more
careful, reducing the likelihood of confusion.

Example:

 A brand called Rolexx selling wristwatches might not easily confuse consumers who are
familiar with Rolex as a luxury brand, as luxury buyers are highly attentive.

 However, a toothpaste brand called Colgatee could confuse consumers because toothpaste
is a daily-use item, and buyers do not always examine branding in detail.

5. Evidence of Actual Confusion

If real-world examples of consumer confusion are documented, courts are more likely to rule
in favor of the existing trademark owner. Evidence may include:

Customer complaints mistaking one brand for another. Social media or online reviews where
consumer’s express confusion. Misdirected sales inquiries or orders intended for the original
brand but mistakenly placed with the new brand.

Example:

 If customers walk into a store and ask for Nikee thinking it’s Nike, this serves as direct
evidence of confusion.

 If emails meant for Burger King are mistakenly sent to Burger Queen, it strengthens the
case for infringement or refusal of registration.

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. 28

27
M. Roshini, “The Role of Consumer Confusion in Trademark Infringement Cases,” Indian Journal of
Integrated Research in Law, Vol. V, Issue II, 2025, pp. 1162–1167
28
2004 AIR SC 3540

26
In this pivotal case, the Supreme Court of India addressed the applicability of trademark
principles to domain names. Satyam Infoway, operating under the domain "sify.com," sought
an injunction against Sifynet Solutions, which had registered similar domain names like
"siffynet.net" and "siffynet.com." The Court recognized that domain names serve the same
function as trademarks in identifying the source of goods or services and can thus be protected
under the Trade Marks Act, 1999. It emphasized that the similarity between the domain names
was likely to cause confusion among internet users, potentially diverting customers to
unintended websites. The Court applied the "likelihood of confusion" test, considering factors
such as the similarity of the marks, the nature of the services, and the potential for consumer
deception. Consequently, it granted an injunction in favor of Satyam Infoway, reinforcing the
principle that domain names are entitled to trademark protection when they fulfill the same role
in commerce.

Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors.29

In this case, the Supreme Court provided clarity on the standards for trademark infringement
under Section 29(3) of the Trade Marks Act, 1999. Renaissance Hotel Holdings, proprietor of
the registered trademark "Renaissance," filed a suit against B. Vijaya Sai & Ors. for using an
identical mark for similar services. The Court held that when an identical mark is used for
identical or similar goods or services, the likelihood of confusion is presumed, and
infringement is established without the need to prove actual confusion or the defendant's intent.
This presumption simplifies the enforcement of trademark rights, placing the burden on the
defendant to rebut the likelihood of confusion. The judgment underscores the importance of
protecting registered trademarks from unauthorized use that could mislead consumers, even in
the absence of malicious intent.

2.4 Relationship between Infringement and Grounds for Refusal

Introduction

Trademark law serves the dual purpose of protecting the integrity of trademarks and preventing
consumer confusion in the marketplace. Two key mechanisms help achieve this:

29
2022 SCC 5 1

27
Grounds for refusal of trademark registration (Sections 9 and 11 of the Trade Marks Act, 1999),
which prevent trademarks from being registered if they fail to meet legal requirements.

Trademark infringement law (Section 29), which enforces the rights of registered trademark
owners against unauthorized or deceptive use by third parties.

While these two areas operate at different stages one during the registration process and the
other after a trademark is in use they share fundamental principles and legal tests. Both work
towards ensuring that trademarks remain distinctive, non-deceptive, and non-conflicting with
existing marks.

Key Connections Between Trademark Infringement and Grounds for

Refusal

Trademark infringement and the grounds for refusal of trademark registration are intrinsically
linked within the framework of the Trade Marks Act, 1999. Sections 9 and 11 of the Act outline
the absolute and relative grounds for refusal, aiming to prevent the registration of marks that
could mislead consumers or infringe upon existing trademark rights. 30 Understanding these
provisions is essential, as they serve not only to protect the interests of trademark proprietors
but also to safeguard consumers from confusion and deception in the marketplace. This
interconnectedness underscores the importance of a comprehensive approach to trademark law,
where the prevention of infringement begins with stringent registration standards.

1. Prevention vs. Enforcement: Two Sides of the Same Coin

The difference between grounds for refusal and trademark infringement lies primarily in when
the law is applied:

Grounds for refusal (Prevention)

30
Gahtori, Jagjeevan Singh. “Understanding the Grounds and Consequences of Trademark Registration Refusal
Under Indian Trade Mark Laws,” Jai Maa Saraswati Gyandayini e-Journal, Vol. 10, Issue III, Jan. 2025, pp. 22–
32.

28
The law prevents the registration of trademarks that are likely to cause confusion, deceive
consumers, or infringe upon existing rights. Sections 9 and 11 of the Trade Marks Act, 1999,
prohibit the registration of generic, deceptive, or conflicting marks.

Example: If a company applies for the trademark Nikee for footwear, it will be refused under
Section 11 because it is deceptively similar to Nike.

Trademark Infringement (Enforcement)

The law prohibits unauthorized use of an already registered trademark to prevent confusion,
misrepresentation, or unfair advantage. Section 29 of the Trade Marks Act, 1999, allows the
rightful trademark owner to take legal action against infringers.

Example: If an unregistered business starts selling shoes under the name Nikee, Nike can sue
for infringement under Section 29 even if Nikee is not registered.

Thus, grounds for refusal serve as a preventative mechanism, while infringement laws act as a
remedial measure when prevention fails.

2. Likelihood of Confusion Test in Both Areas

One of the most critical factors in both refusal of registration and trademark infringement cases
is the likelihood of confusion test, which determines whether a consumer is likely to mistake
one trademark for another.

Section 11 (Refusal of Registration):

A trademark is refused registration if it is identical or similar to an existing registered trademark

and applies to related goods/services. The test considers factors such as visual, phonetic, and
conceptual similarity, product category, and consumer perception.

Example: Dove (soap) vs. Dove (shampoo) – Since both belong to personal care, the mark
would be refused under Section 11(1).

Section 29 (Trademark Infringement):

29
If a new business starts using a mark that is confusingly similar to a registered trademark, the
rightful owner can sue for infringement. The same likelihood of confusion test applies,
including considerations of market channels, consumer awareness, and product similarity.

Example: If a new company sells running shoes under the name Adibas, Adidas can sue under
Section 29(2)(b) because the name and product category create confusion.

Since both trademark refusal and infringement cases apply the same legal test, it reinforces the
principle that consumer confusion should be avoided both at the registration stage and in
commercial use.

3. Protection of Well-Known Marks in Both Areas

Famous and well-established trademarks enjoy greater legal protection in both registration and
infringement cases.

Section 11(2) (Refusal of Registration):

Prevents the registration of marks that are similar to well-known trademarks, even if the
products/services are unrelated. The rationale is to prevent dilution and protect the brand’s
goodwill.

Example: A company applying for McDonald's Finance (financial services) would be refused,
as McDonald's is a well-known brand in the food industry.

Section 29(4) (Trademark Infringement):

Prohibits the unauthorized use of a well-known mark on any goods or services, even if they are
unrelated. Prevents brand dilution, where the distinctive character of a famous mark is
weakened.

Example: If a small perfume company starts using the name Google Perfumes, Google can sue
under Section 29(4) because it is a globally well-known trademark.

This highlights the stronger legal safeguards provided to well-known trademarks, ensuring that
their reputation is not exploited or diminished by others.

30
4. Public Interest Considerations in Both Areas

Trademark law does not only protect businesses; it also serves a broader public interest by
preventing deception and ensuring fair competition.

Consumer Protection:

Grounds for refusal prevent misleading trademarks from being registered (e.g., falsely
suggesting quality, origin, or organic certification). Infringement laws protect consumers from
being misled into purchasing fake or substandard products.

Example: A fake medicine brand using a name similar to a trusted pharmaceutical company
would be both refused registration and penalized for infringement.

Market Competition:

Preventing the registration or use of confusingly similar marks ensures that businesses compete
fairly without misleading consumers.

Example: If a new fast-food chain tries to register Burger Queen, it would be refused under
Section 11, and if it starts operating, Burger King could sue for infringement under Section 29.

Both refusal and infringement laws uphold ethical business practices and protect market
integrity.

2.4 Important cases of Confusion in Trademark Infringement

1. Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.,31 (2018) 9 SCC
183
“…..similar marks can coexist in different classes, especially when the goods in those
classes which are not related in a way that would likely cause consumer confusion. One
of the basic criteria for removing a mark is the likelihood of confusion in the minds of
the public. In this case, the goods in the respective classes are distinct and not in direct
competition. Consequently, there is no reasonable basis to for the Registrar to have held

31
(2018) 9 SCC 183

31
 that consumers would be confused or misled into associating the Appellant's mark with
Respondent……”
2. Evergreen Sweet House VS. Evergreen 32

“As to what is the appropriate standard to adjudge infringement of registered trade mark
is no longer open to debate; the issue has been settled now for almost four decades. The
standard to be adopted in such cases is that of 'likelihood of confusion' and not actual
deception and actual damage. The Court, in such cases is to determine the likelihood of
confusion and deceptive similarity in order to arrive at a prima facie finding of
infringement keeping in mind the following considerations:

(i) the broad and essential features of the of competing marks will have to be viewed,

(ii) the marks will have to be considered as a whole in their respective contexts,

(iii) the similarities rather than dissimilarities will have to be taken note of
and…………”

3. Ruston & Hornsby Ltd. v. Zamindara Engineering Co. Ltd.33

“In an action for infringement where the defendant's trade mark is identical with the
plaintiff's mark, the Court will not enquire whether the infringement is such as is likely
to deceive or cause confusion. But where the alleged infringement consists of using not
the exact mark on the register, but something similar to it, the test of infringement is
the same as in an action for passing-off. In other words, the test as
to likelihood of confusion or deception arising from similarity of marks is the same
both in infringement and passing-off actions.”

4. Corn Products Refining Co. v Shangrila Food Products Ltd. 34

“………Again, in deciding the question of similarity between the two marks we have
to approach it from the point of view of a man of average intelligence and of imperfect
recollection. To such a man the overall structural and phonetic similarity and the

32
2008 ILR DEL 17 1132
33
1970 AIR SC 1649
34
1960 AIR SC ) 142

32
 similarity of the idea in the two marks is reasonably likely to cause a confusion between
them.”

5. Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel And OthersSupreme
Court Of India 35

“………It is well settled that when defences in regard to right of user are set up, the
onus would be on the person who has taken the said plea. It is equally well settled that
a person cannot use a mark which would be deceptively similar to that of the registered
trade mark. Registration of trade marks is envisaged to remove any confusion in the
minds of the consumers. If, thus, goods are sold which are produced from two sources,
the same may lead to confusion in the minds of the consumers. In a given situation, it
may also amount to fraud on the public. A proprietor of a registered trade mark
indisputably has a statutory right thereto. In the event of such use by any person other
than the person in whose name the trade mark is registered, he will have a statutory
remedy in terms of Section 29 of the 1958 Act. Ordinarily, therefore, two people are
not entitled to the same trade mark, unless there exists an express licence in that behalf.”

6. American Cynamid Corpn. v. Connaught Laboratories Inc.36

“Exacting judicial scrutiny is required if there is a possibility of confusion over marks
on medicinal products because the potential harm may be far more dire than that
in confusion over ordinary consumer products.”
7. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories,37
“29. When once the use by the defendant of the mark which is claimed to infringe the
plaintiff's mark is shown to be “in the course of trade”, the question whether there has
been an infringement is to be decided by comparison of the two marks. Where the two
marks are identical no further questions arise; for then the infringement is made out.
When the two marks are not identical, the plaintiff would have to establish that the mark
used by the defendant so nearly resembles the plaintiff's registered trade mark as is
likely to deceive or cause confusion and in relation to goods in respect of which it is
registered (Vide Section 21). A point has sometimes been raised as to whether the words

35
2006 AIR SC 3304
36
231 USPQ 128 (2nd Cir 1986)
37
AIR 1965 SC 980

33
“or cause confusion” introduce any element which is not already covered by the words
“likely to deceive” and it has sometimes been answered by saying that it is merely an
extension of the earlier test and does not add very materially to the concept indicated
by the earlier words “likely to deceive”. But this apart, as the question arises in an action
for infringement the onus would be on the plaintiff to establish that the trade mark used
by the defendant in the course of trade in the goods in respect of which his mark is
registered, is deceptively similar. This has necessarily to be ascertained by a comparison
of the two marks — the degree of resemblance which is necessary to exist to cause
deception not being capable of definition by laying down objective standards. The
persons who would be deceived are, of course, the purchasers of the goods and it is the
likelihood of their being deceived that is the subject of consideration. The resemblance
may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The
purpose of the comparison is for determining whether the essential features of the
plaintiff's trade mark are to be found in that used by the defendant. The identification
of the essential features of the mark is in essence a question of fact and depends on the
judgment of the Court based on the evidence led before it as regards the usage of the
trade. It should, however, be borne in mind that the object of the enquiry in ultimate
analysis is whether the mark used by the defendant as a whole is deceptively similar to
that of the registered mark of the plaintiff.”

34
 CHAPTER 3

Likelihood of Confusion Test

The Likelihood of Confusion Test is a fundamental legal standard used in trademark law to
determine whether one trademark is likely to cause confusion with another in the minds of
consumers. This test is applied when a trademark owner claims that another party’s use of a
similar mark infringes on their rights, potentially leading to consumer confusion about the
source, sponsorship, or affiliation of goods and services.38 Courts and trademark offices apply
this test to assess the potential for marketplace confusion and determine whether legal action
is warranted.

This document explores the Likelihood of Confusion Test by examining its legal framework,
key factors, judicial applications, and notable case precedents.

3.1 Historical Development and Theories behind the Likelihood of

Confusion Test

The Likelihood of Confusion Test has its origins in common law principles of unfair
competition and trademark protection. The fundamental idea behind the test is to protect
consumers from deception and to safeguard the goodwill and reputation of businesses. Over
time, courts and legislative bodies refined the concept to establish a structured approach to
evaluating potential confusion between trademarks.

Early Trademark Protection (Pre-20th Century)

In the earliest stages of trademark law, trademarks were primarily protected under common
law as part of passing off actions. Merchants and traders used trademarks to distinguish their
goods from those of competitors, and legal actions were taken when another party attempted
to misrepresent their goods under a misleadingly similar name or mark. Courts developed the
concept of consumer confusion as a legal standard to assess whether a competitor’s use of a
similar mark was misleading buyers.

38
Asia IP, “A Deep Dive into Trademark Confusion,” Asia IP, 31 Jan 2025.Wikipedia+3

35
During this period, there were no formal statutory laws governing trademarks, and disputes
were generally decided based on equity principles and common law doctrines. The primary
goal was to ensure that businesses could maintain the unique identity of their products and that
consumers were not deceived into purchasing counterfeit or inferior goods due to deceptive
branding practices.

Development in the 20th Century

With the rise of industrialization and global trade, the need for structured trademark protection
became increasingly evident. Countries began enacting statutory trademark laws to formalize
the rights and protections available to trademark owners. The United Kingdom, United States,
and India were among the early adopters of such laws, setting the stage for more consistent
application of trademark rights.

During this era, courts and trademark offices started considering multiple factors when
determining confusion, including visual similarity, phonetic similarity, and conceptual
meaning. The goal was to create a framework that could objectively assess whether a consumer
was likely to confuse two brands based on their marks.

International agreements also played a crucial role in shaping the Likelihood of Confusion Test.
The Paris Convention for the Protection of Industrial Property (1883) was one of the first
treaties to establish international trademark protection standards, requiring signatory countries
to provide legal remedies for trademark infringement. Later, the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS, 1995) reinforced the principle that consumer
confusion should be a key factor in enforcing trademark rights across different jurisdictions.
The term "confusion" holds significant importance in Indian trademark law, particularly
concerning the assessment of trademark infringement and registration. Its interpretation and
application are pivotal in determining whether a trademark is likely to mislead consumers,
thereby affecting the rights of trademark owners and the interests of the public39. These
agreements helped harmonize trademark laws worldwide, ensuring that the likelihood of
confusion remained a central aspect of legal trademark enforcement.

Theoretical Underpinnings

39
Trademark Confusion Revealed: An Empirical Analysis" by Daryl Lim

36
Several legal and economic theories support the rationale behind the Likelihood of Confusion
Test. These theories highlight why consumer confusion should be a central concern in
trademark law and how protecting trademarks ultimately benefits both businesses and
consumers.

1. Consumer Protection Theory

The Consumer Protection Theory posits that trademarks serve as identifiers of the
source and quality of goods and services. When a consumer sees a familiar trademark,
they rely on it to indicate a product’s origin and attributes. If a similar mark misleads
consumers into purchasing a product they did not intend to buy, it undermines consumer
trust and disrupts fair market practices. The Likelihood of Confusion Test ensures that
consumers are not deceived by misleading branding, preserving the integrity of
purchasing decisions.

2. Economic Theory

The Economic Theory emphasizes that trademarks contribute to a competitive market

by allowing businesses to build brand equity and differentiate themselves from
competitors. If one company adopts a confusingly similar mark to a well-established
brand, it can unfairly benefit from the reputation and marketing investments of the
original trademark owner. This free-riding effect distorts fair competition and reduces
incentives for businesses to invest in brand development. By preventing such unfair
advantages, the Likelihood of Confusion Test fosters a level playing field in the
marketplace.

3. Trademark Distinctiveness Theory

The Trademark Distinctiveness Theory highlights that not all trademarks are created
equal. Strong, well-known trademarks such as those that are arbitrary or fanciful
deserve greater protection because they are more likely to be recognized by consumers
and associated with a single source. If a competitor uses a similar mark, the risk of
consumer deception increases significantly. Therefore, courts and trademark offices
afford stronger trademarks broader legal protection under the Likelihood of Confusion
Test to prevent consumer deception and brand dilution.

37
 3.2 Purpose and Significance in Trademark Law

The primary purpose of the Likelihood of Confusion Test is to determine whether the use of a
trademark by one party infringes upon another’s rights. By ensuring that trademarks remain
distinct and non-misleading, this test upholds the integrity of branding and commerce while
fostering an environment of fair competition. The significance of this test extends to various
aspects of trademark law, including consumer protection, brand reputation, and regulatory
compliance.

Consumer Protection

One of the key objectives of trademark law is to safeguard consumers from deception40. When
a trademark resembles another well-known mark, consumers may mistakenly associate the two
brands, leading to incorrect purchasing decisions. The Likelihood of Confusion Test prevents
such misleading practices by ensuring that trademarks remain distinguishable.

For instance, if a company attempts to market a soft drink under the name "Coca-Kola,"
consumers might assume it is a variant of "Coca-Cola." Without legal intervention, this could
lead to widespread confusion, potentially causing consumers to purchase an unintended
product. The test ensures that consumers can make informed choices and trust that their
preferred brands maintain a consistent identity.

Brand Reputation and Goodwill

Trademarks serve as valuable assets for businesses, representing years of investment in

marketing, customer trust, and quality assurance. If another company introduces a mark that
closely resembles a well-established brand, it can dilute the original brand’s reputation and
cause financial losses.

For example, if a small electronics manufacturer uses the mark "Appel" for mobile devices,
consumers may associate it with "Apple Inc." If the "Appel" products are of inferior quality, it
can tarnish Apple’s brand image and erode customer confidence. The Likelihood of Confusion

40
Lisa P. “Consumer Protection vis-à-vis Trademark Law”, 1(1) International Journal on Consumer Law and
Practice 1 (2013).

38
Test thus serves as a shield against unfair competition, ensuring that businesses can protect the
goodwill they have built over time.

Fair Competition

The test also promotes a healthy marketplace by ensuring that new businesses establish unique
brand identities rather than imitating successful competitors. This principle prevents market
entrants from gaining an unfair advantage by capitalizing on a pre-existing brand’s
recognition.41 Instead, it encourages originality and innovation in branding strategies.

If businesses were permitted to adopt names or logos similar to well-known brands, it would
lead to a chaotic marketplace where multiple companies benefit from a single entity’s success.
By preventing such practices, the Likelihood of Confusion Test ensures that businesses
compete on merit rather than deception.

Statutory Recognition in India – The Trademarks Act, 1999

India’s trademark laws incorporate the Likelihood of Confusion Test through The Trademarks
Act, 1999, which sets forth clear provisions for preventing trademark infringement and
confusion. Two key sections of the Act outline the importance of consumer protection and
brand identity:

 Section 29(2) states that trademark infringement occurs if a later mark is similar to an
earlier registered mark and causes confusion among the public. This provision
establishes consumer confusion as a decisive factor in legal trademark disputes. It
ensures that businesses cannot legally use similar marks to mislead consumers about
the source of a product or service.

 Section 11(1) provides that a trademark will not be registered if it is identical or similar
to an already registered mark and is likely to cause confusion among consumers. This
section acts as a preventive measure, ensuring that potentially confusing trademarks do
not enter the marketplace in the first place. By refusing registration to conflicting marks,
the law helps maintain a structured and non-misleading commercial environment.

41
Gangjee, Dev Saif. “Unfair Competition: India”, SSRN, 2022.

39
Through these statutory provisions, India aligns with international trademark protection
standards, reinforcing the importance of distinctiveness and consumer clarity in trademark law.

3.3 Factors Affecting Confusion: Similarity of Marks, Goods/Services, and

Consumer Perception

To establish the likelihood of confusion, courts consider multiple components that assess how
similar the conflicting trademarks are and whether an average consumer is likely to mistake
one for the other. The analysis primarily focuses on visual, phonetic, and conceptual
similarities between the marks. In addition, courts examine the nature of the goods and services,
the relevant consumer base, and how the trademarks are perceived in the marketplace.

Similarity of Marks

A trademark may be identical, similar, or deceptively similar to another, which can lead to
confusion among consumers. Courts analyze several aspects of the trademarks in question to
determine their level of similarity:

1. Visual Similarity: Courts compare the overall appearance, font, color scheme, and
design of the two marks. If the trademarks look similar at a glance, there is a strong
likelihood of confusion.

2. Phonetic Similarity: Even if two trademarks are spelled differently, they may still
sound alike when spoken. This is particularly relevant for brands with similar-sounding
names.

3. Conceptual Similarity: The meaning behind the marks is also taken into account. If
two trademarks evoke the same idea or impression, confusion may arise.

Example: AMUL v AMAL

A case involving the well-known dairy brand Amul and another company using the name Amal
illustrates the significance of phonetic similarity. Although the spellings are slightly different,
the pronunciation is nearly identical, which could mislead consumers into believing that the
two brands are connected. Courts consider such phonetic resemblance as a strong indication of
potential confusion.

40
 Similarity of Goods or Services

Another crucial component in determining confusion is whether the two brands operate in the
same industry or product category. If two companies offer similar goods or services, consumers
are more likely to believe they originate from the same source.

When a company tries to introduce a brand name that closely resembles an established
trademark in the same industry, it creates a risk of deception. This is particularly relevant in
cases where consumers rely on trademarks to distinguish between competing products.

Example: NIKE v NIKEE

If a company were to introduce a line of shoes under the name "Nikee," consumers might
mistakenly associate it with the globally recognized brand Nike. Due to the high similarity in
both name and industry, there is a substantial likelihood of confusion. As a result, such usage
would likely be prohibited under Section 29(2)(b) of the Trademarks Act, 1999, which
explicitly bars the use of similar marks on identical or related goods and services.

Consumer Perception and Target Audience

Courts also assess how the average consumer would perceive the trademarks in question. This
component is based on the principle that consumers generally do not engage in detailed
analyses of trademarks but instead form an overall impression of a brand based on its
appearance, sound, and meaning.

The nature of the target audience plays a significant role in determining the likelihood of
confusion. Some consumers pay closer attention to trademarks than others, depending on the
type of product or service being offered.

Key Principle: “The Average Consumer” Standard

The test relies on how an ordinary person, with average intelligence and imperfect recollection,
perceives the trademark.42If the similarities between the two marks are strong enough to cause

42
IndusLaw, “Who Is An Average Consumer With Imperfect Recollection?”, Mondaq, 2022.

41
confusion among a reasonable segment of the public, the court is likely to rule in favour of the
original trademark owner.

In trademark law, particularly within the European Union (EU), the concept of the “average
consumer” plays a pivotal role in assessing the likelihood of confusion between competing
marks. This legal construct serves as the benchmark for evaluating how trademarks are
perceived, remembered, and distinguished in the marketplace. The average consumer is not an
actual person but a hypothetical figure characterized as being reasonably well-informed,
observant, and circumspect. This standard reflects the behavior of a typical buyer, neither
exceptionally inattentive nor overly meticulous, and helps maintain consistency in judicial
reasoning.

Crucially, the average consumer is assumed to have an imperfect recollection of trademarks.

Consumers are rarely afforded the opportunity to compare marks side-by-side and typically
rely on the overall impression left by a mark. This imperfect memory means that confusion
may arise even where there are subtle differences between marks, especially if they are visually,
phonetically, or conceptually similar. The European Court of Justice has reinforced this
perspective in cases such as Lloyd Schuhfabrik Meyer, stating that the consumer tends to form
a general impression rather than remember precise details.

Another important aspect of this standard is its adaptability based on the nature of goods or
services involved. For everyday, low-cost consumer goods, the threshold for confusion is lower
because consumers are likely to pay less attention. Conversely, in sectors involving high-value,
technical, or health-related products, a higher degree of attention is presumed, making
confusion less likely unless the similarities are striking.

Overall, the average consumer standard injects realism into trademark assessments by
anchoring legal analysis in practical consumer behavior. It allows courts to focus on how real-
world buyers interpret brands, thereby balancing legal predictability with the complexities of
market interaction.

Example: LUXURY GOODS v FAST-MOVING CONSUMER GOODS (FMCG)

 Luxury Goods: In industries such as high-end fashion, watches, and automobiles,

consumers tend to be more discerning. Buyers of luxury products often conduct

42
 extensive research before making a purchase. As a result, minor differences in branding
may be sufficient to distinguish one company from another, reducing the likelihood of
confusion.

 Fast-Moving Consumer Goods (FMCG): For everyday products like biscuits, soap,
or packaged snacks, consumers may not pay close attention to the brand name. Since
purchasing decisions in this sector are often made quickly, even minor similarities in
trademarks can lead to confusion. As a result, trademark protection tends to be stricter
for FMCG products.

In both scenarios, courts evaluate how consumers interact with brands and how likely they are
to be misled by similar trademarks. This consumer-oriented approach ensures that trademark
law remains relevant to real-world buying behavior.

The Likelihood of Confusion Test is central to trademark law, balancing the interests of
businesses in protecting their brands while allowing fair competition. By considering multiple
factors, courts and trademark offices aim to prevent consumer deception while ensuring that
legitimate brands can coexist in the marketplace. Understanding this test is essential for
businesses, attorneys, and brand owners navigating trademark disputes and intellectual
property protection.

Ultimately, each case is assessed on its unique facts, and the outcome depends on how the
various factors interplay in real-world consumer perception.

Amritdhara Pharmacy v. Satyadeo Gupta 43

In this seminal case, the Supreme Court examined the trademarks "Amritdhara" and
"Lakshmandhara," both associated with medicinal products. The Court emphasized that the
evaluation should be from the perspective of an average consumer with imperfect recollection.
It held that such a consumer would likely be deceived by the phonetic and structural similarities
between the two marks, especially given the nature of the goods involved. The judgment
underscored that consumers typically do not dissect trademarks into their component parts but
perceive them as a whole. Therefore, the overall impression of the marks is crucial in

43
1954 AIR 44

43
determining the likelihood of confusion. This case established the foundational principle that
the average consumer's perception is central to trademark infringement assessments.

Corn Products Refining Co. v. Shangrila Food Products Ltd. 44

Here, the Supreme Court addressed the dispute between "Glucovita" and "Gluvita," both
trademarks for glucose-based products. The Court reiterated the importance of considering the
perspective of an average consumer with imperfect recollection. It concluded that the phonetic
similarity between the two marks could lead to confusion among consumers, particularly given
the identical nature of the products. The judgment reinforced the principle that the likelihood
of confusion must be assessed based on the overall impression of the marks rather than their
individual components.

Parle Products (P) Ltd. v. J.P. & Co., Mysore 45

In this case, the Supreme Court evaluated the similarity between the packaging of Parle's
"Glucose Biscuits" and the defendant's product. The Court held that the overall impression
created by the packaging, including color schemes and design elements, could mislead an
average consumer. It emphasized that the test for deceptive similarity should consider the
general impression of the marks and packaging as perceived by an average consumer, rather
than a detailed comparison. This judgment highlighted the significance of the average
consumer standard in cases involving trade dress and packaging similarities.

3.4 Strengths and shortcomings of the Indian approach

Strengths

The Indian Trade Marks Act, 1999, marks a significant advancement in the country's
intellectual property framework46. One of its primary strengths is its alignment with
international standards, particularly the TRIPS Agreement, facilitating global recognition and
protection of Indian trademarks. The Act introduced service marks, recognized well-known
marks, and allowed for multi-class applications, enhancing its utility for businesses. It provides
both civil and criminal remedies, ensuring robust enforcement mechanisms. Additionally, the

44
1960 SCR 1 968
45
1972 AIR SC 1359
46
"Likelihood of Confusion in Trademark Law of India" – GFER Journal

44
Act outlines detailed opposition and rectification procedures, allowing third parties to
challenge improperly granted rights.

The Act also accommodates non-traditional trademarks, such as sound and color marks,
reflecting a progressive approach to trademark protection47. The establishment of the
Intellectual Property Appellate Board (IPAB) aimed to expedite dispute resolution, although it
has since been abolished and its functions transferred to the High Courts. The adoption of
electronic filing and digitization of records has improved accessibility and efficiency in the
registration process.

Shortcomings

Despite these strengths, the Act faces several challenges in practice and interpretation. A
notable shortcoming is the lack of specific statutory guidelines for determining the "likelihood
of confusion," leading to inconsistent judicial interpretations and uncertainty for trademark
owners. The concept of the "average consumer" is not well-defined under Indian law, resulting
in ambiguity in assessing consumer perception.

Enforcement remains a critical issue, with procedural delays, limited judicial expertise in lower
courts, and a backlog of cases undermining the Act's effectiveness.48 The protection of
unregistered trademarks through the common law remedy of passing off is often difficult to
prove, placing a burden on small businesses and start-ups. Additionally, the Act's provisions
for non-traditional trademarks, while progressive, lack clarity, leading to challenges in
registration and enforcement.

The following table summarizes the key strengths and shortcomings of the Indian Trade Marks
Act, 1999:

ASPECT STRENGTHS SHORTCOMINGS

International Aligned with TRIPS; recognizes Limited harmonization in

Compliance well-known marks practice

47
Intepat IP Services Pvt. Ltd., “Critical Examination of 'Confusion' Term - Sec 9(2)(a) and Sec 11(1) of the
Trade Marks Act, 1999,” Intepat Blog, 2022
48
Asia IP, “A Deep Dive into Trademark Confusion,” Asia IP, 31 July 2023

45
 Scope of Protection Covers service marks; allows Ambiguity in protection of
multi-class registration non-traditional marks

Enforcement Provides both civil and criminal Enforcement delayed due to

Mechanisms remedies backlog and limited
resources

Likelihood of Confusion Adopted judicially with reference Lacks statutory clarity;

Test to global standards inconsistent application

Average Consumer Recognized implicitly in case law "Average consumer" not

Perception clearly defined or
consistently applied

Opposition/Rectification Available and relatively accessible Prone to delays; susceptible

Procedures to abuse for anti-
competitive purposes

Judicial Precedent Incorporates international Overreliance on foreign law

jurisprudence (e.g., EU, UK, US) without contextual
adaptation

India’s trademark regime exhibits a commendable alignment with international standards,

particularly through its compliance with the TRIPS Agreement and its judicial recognition of
well-known marks. The system allows for the registration of service marks and supports multi-
class applications, which streamlines administrative procedures for businesses operating in
multiple sectors. Moreover, the adoption of civil and criminal remedies provides a dual-layered
enforcement mechanism that strengthens deterrence against infringement. Importantly, Indian
courts have drawn on global jurisprudence in interpreting the Likelihood of Confusion test and
other foundational principles, reflecting an openness to international legal developments. These
strengths collectively position India as a favorable jurisdiction for trademark protection in
theory and underscore its efforts to modernize and globalize its intellectual property
framework.

However, the practical implementation of these principles reveals several persistent

shortcomings. Despite recognizing non-traditional marks in principle, India’s legal framework

46
remains ambiguous regarding the registrability and enforceability of such marks, particularly
in relation to smell, motion, or multimedia trademarks. The enforcement system, while robust
on paper, suffers from procedural delays due to a significant backlog of cases and resource
constraints within the judiciary and trademark offices. The Likelihood of Confusion test,
though influenced by global norms, has not been codified in a uniform statutory format, leading
to inconsistent application and uncertainty in litigation. Similarly, the average consumer
standard—an essential benchmark in assessing confusion and deceptive similarity—has not
been clearly defined, resulting in interpretive disparities across different judicial forums.
Opposition and rectification procedures, though available and relatively accessible, are
vulnerable to strategic misuse and procedural stalling, which can hamper legitimate trademark
registrations and prolong disputes unnecessarily.

In conclusion, while India's trademark law demonstrates a strong foundation built on

international compliance, expansive coverage, and an evolving jurisprudence, its operational
efficiency and doctrinal clarity remain areas requiring focused reform. The judiciary’s reliance
on foreign precedents must be balanced with a nuanced understanding of India’s socio-
economic and linguistic diversity, ensuring that global principles are contextually adapted
rather than mechanically transplanted. To bolster investor confidence and enhance the
effectiveness of trademark protection, reforms must prioritize the streamlining of enforcement
mechanisms, clearer statutory guidance on consumer perception standards, and procedural
safeguards against the misuse of opposition and rectification mechanisms. Only then can India
fully realize its potential as a robust and reliable jurisdiction for intellectual property protection
in the global economy.

47
 CHAPTER-4

4.1 Jurisprudence of EUTMR and CJEU

The European Union Trade Mark Regulation (EUTMR), currently codified as Regulation (EU)
2017/1001, serves as the foundational legal instrument governing the registration and
protection of trademarks within the EU. It harmonizes the substantive and procedural aspects
of trademark law across Member States, ensuring consistency in the application and
enforcement of trademark rights.

The Court of Justice of the European Union (CJEU) plays a pivotal role in interpreting the
EUTMR, providing authoritative guidance on complex legal issues. For instance, in Intel
Corporation Inc. v. CPM United Kingdom Ltd.49, the CJEU clarified the criteria for establishing
trademark dilution under Article 4(4)(a) of Directive 89/104/EEC. The Court emphasized that
mere association between marks is insufficient; there must be evidence of a link in the minds
of the relevant public and a change in the economic behavior of the average consumer.

European Union Trade Mark Regulation (EUTMR)

The European Union Trade Mark Regulation (EUTMR), formally known as Regulation (EU)
2017/1001, serves as the foundational legal framework for trademark protection across the
European Union. It harmonizes the rules and procedures for registering and enforcing
trademarks, ensuring consistency and legal certainty for rights holders throughout the EU.

A key feature of the EUTMR is the unitary character of the EU trade mark (EUTM). Once
registered, an EUTM provides uniform protection across all Member States, granting the
proprietor exclusive rights throughout the EU.50 This means that the mark has the same legal
effect in every Member State, simplifying the process for businesses seeking EU-wide
trademark protection.

The registration process for an EUTM involves submitting an application to the European
Union Intellectual Property Office (EUIPO). The application must include a request for

49
Case C-252/07
50
APRAM. "Evaluation Study of the European Union Trade Mark Regulation." APRAM, November 17, 2023.
https://apram.com/wp-content/uploads/2023/11/Evaluation-study-of-the-EUTMR-APRAM-contribution-
17.11.2023.pdf.

48
registration, information identifying the applicant, a list of the goods or services for which
registration is sought, and a representation of the trade mark. An application fee must also be
paid within one month of the filing date. Once the application is filed, the EUIPO examines
whether it meets all the conditions for granting an EUTM. If the application satisfies all
requirements and no opposition is raised or accepted, the trade mark is registered.

The scope of protection conferred by an EUTM includes the ability to prevent unauthorized
use of identical or similar signs for identical or similar goods or services, where such use could
cause confusion among the public. Additionally, the EUTMR addresses protection against
dilution, where a mark with a reputation is used without due cause in a manner detrimental to
its distinctive character or repute.

An EUTM is registered for a period of ten years from the date of filing the application and can
be renewed indefinitely for successive ten-year periods, provided renewal fees are paid. The
regulation also sets out grounds for revocation, such as non-use of the mark for five consecutive
years, and for invalidity, including bad faith registration or conflict with earlier rights.

Furthermore, the EUTMR allows for the registration of collective marks, used by members of
an association, and certification marks, which certify specific characteristics of goods or
services. These provisions ensure that the trademark system accommodates various types of
marks and the diverse needs of businesses and organizations within the EU.

Court of Justice of the European Union (CJEU)

The Court of Justice of the European Union (CJEU) stands as the highest judicial authority
within the European Union's legal framework. Established in 1952, its primary role is to ensure
the uniform interpretation and application of EU law across all Member States. This is crucial

The CJEU comprises two main courts: the Court of Justice and the General Court. The Court
of Justice, often referred to as the ECJ, handles cases brought by EU institutions, Member
States, and, in certain circumstances, individuals or companies51. It is responsible for
interpreting EU law and ensuring its consistent application. The General Court, on the other
hand, primarily deals with actions brought by individuals and companies, particularly in areas

51
Michal Bobek, “The Court of Justice of the European Union” 2 European Legal Studies Research Papers 1
(2014).

49
like competition law, state aid, trade, agriculture, and trademarks. Both courts work together
to uphold the rule of law within the EU.

One of the CJEU's most significant functions is the preliminary ruling procedure. When
national courts encounter questions regarding the interpretation or validity of EU law, they can
refer these questions to the CJEU. This mechanism ensures that EU law is applied uniformly
across all Member States and helps prevent divergent interpretations that could undermine the
legal cohesion of the Union.

Additionally, the CJEU has the authority to review the legality of acts adopted by EU
institutions and to ensure that Member States fulfill their obligations under EU law. It can also
adjudicate disputes between EU institutions and Member States or between Member States
themselves. Through these functions, the CJEU plays a pivotal role in shaping EU law and
ensuring its effective enforcement.

The Court's decisions have far-reaching implications, influencing various aspects of EU

governance and the daily lives of its citizens. By interpreting and applying EU law, the CJEU
contributes to the development of a cohesive and integrated legal system within the Union.

In the landmark case Intel Corporation Inc. v. CPM United Kingdom Ltd.52, the Court of Justice
of the European Union (CJEU) clarified the criteria for establishing trademark dilution under
Article 4(4)(a) of Directive 89/104/EEC. Intel, a globally recognized technology company,
opposed CPM’s application to register the trademark “INTELMARK” on grounds that it would
dilute the distinctive character and reputation of Intel’s well-known “INTEL” trademark.

The central issue was whether Intel could rely on protection against dilution, which safeguards
trademarks with a reputation from unfair advantage or detriment caused by the use of a similar
later mark. The CJEU ruled that mere association between the earlier and later marks by the
relevant public is insufficient to prove dilution. Instead, there must be a “link” in the minds of
the relevant public, meaning that consumers recognize a connection between the marks beyond
a vague association. 53
Additionally, Intel had to demonstrate that the use of the later mark
would likely lead to a change in the economic behavior of the average consumer.

52
252/07, [2009] E.T.M.R. 17 (CJEU).
53
D. Gangjee, “Intel v. CPM: The ‘Link’ and the ‘Change in Economic Behavior’ in European Trademark Law,” in
Commentaries on EU Trademark Jurisprudence

50
This involves showing that the later mark’s use either takes unfair advantage of or damages the
reputation or distinctive character of the earlier mark. The Court emphasized that the trademark
owner bears the burden of proving both the existence of the mental link and the likelihood of
economic harm or unfair benefit. This judgment set a high evidentiary standard for dilution
claims, requiring concrete evidence rather than speculative assumptions. The ruling
harmonized the interpretation of dilution protection across the EU, making it clear that
protecting a reputation requires more than showing that consumers merely associate the marks;
it demands proof of actual or likely economic impact. This case remains a key reference point
for trademark owners and practitioners in evaluating and litigating claims related to trademark
dilution.

4.2 The “global appreciation” doctrine

Introduction

The Global Appreciation Test is a fundamental principle in European Union trademark law,
emphasizing a holistic assessment of all relevant factors to determine the likelihood of
confusion between two marks. This approach mandates that courts and trademark authorities
evaluate the overall impression created by the marks, considering their visual, phonetic, and
conceptual similarities, as well as the distinctiveness and reputation of the earlier mark, the
nature of the goods or services, and the relevant consumer's degree of attention. The test
underscores that no single factor should be considered in isolation; instead, all elements must
be weighed collectively to assess the potential for consumer confusion.

This comprehensive evaluation ensures that decisions reflect the real-world complexities of
consumer perception and market dynamics. It prevents the undue protection of weak marks
and ensures that the rights of well-known trademarks are adequately safeguarded against
infringement.

The Global Appreciation Test has been endorsed by several leading cases, which form the
backbone of modern trademark jurisprudence. Key judgments supporting this approach include
Sabel BV v. Puma AG54, Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV55, Canon

54
Case C-251/95, [1997] ECR I-6191
55
Case C-251/95, [1997] ECR I-6191

51
Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc.56, and O2 Holdings Ltd v. Hutchison 3G UK
Ltd.57 These cases collectively reinforce the importance of evaluating the overall commercial
impression to protect consumers and trademark rights effectively.

This method emphasizes evaluating all relevant factors collectively, rather than in isolation,
to determine whether the average consumer might be confused by the use of similar marks.

Key Factors Considered:

1. Visual, Phonetic, and Conceptual Similarities: The overall impression created by

the marks, including their appearance, sound, and meaning.
2. Distinctiveness and Reputation of the Earlier Mark: The inherent distinctiveness
of the earlier mark and its recognition in the marketplace.
3. Similarity of Goods or Services: The degree to which the goods or services
associated with the marks are related.
4. Relevant Consumer's Degree of Attention: The level of attention the average
consumer pays when purchasing the goods or services.

This comprehensive evaluation ensures that decisions reflect the real-world complexities of
consumer perception and market dynamics. It prevents the undue protection of weak marks
and ensures that the rights of well-known trademarks are adequately safeguarded against
infringement.58

How Does the Global Appreciation Test Work?

Courts or trademark offices examine:

 Similarity of Marks: Visual, phonetic, conceptual similarity.

 Nature of Goods/Services: Are the goods similar or related? Are they sold in similar
channels?
 Distinctiveness of Earlier Mark: The stronger or more famous the earlier mark, the
broader the protection.

56
Case C-39/97, [1998] ECR I-5507
57
Case C-39/97, [1998] ECR I-5507
58
Ilanah Fhima & Dev S. Gangjee, The Confusion Test in European Trade Mark Law (Oxford University Press,
2019).

52
  Market Conditions: The usual buyer’s level of care or sophistication.
 Circumstances of Use: Whether the marks would be encountered side by side or
sequentially.
 Actual Confusion Evidence: If available, evidence of actual confusion is strong
support.

Instead of mechanically ticking off each factor, the decision-maker balances these factors in
the context of all the facts to form a global impression.

4.3 Role of the average consumer, imperfect recollection, and distinctive

character

Average Consumer

In EU trademark law, the assessment of likelihood of confusion is conducted from the

perspective of the average consumer. This hypothetical individual is presumed to be reasonably
well-informed, observant, and circumspect. However, the average consumer is also considered
to have an imperfect recollection of trademarks, meaning they may not remember every detail
of a mark but instead retain a general impression. This perspective ensures that the evaluation
reflects how the general public perceives and recalls trademarks in real-world scenarios.

In European Union trademark law, the assessment of the likelihood of confusion is

fundamentally anchored in the perspective of the "average consumer." This concept refers to a
hypothetical individual who is deemed to be reasonably well-informed, observant, and
circumspect. Importantly, this standard does not assume an expert or specialist consumer, but
rather an ordinary member of the public who exercises a normal level of attention in purchasing
decisions. The rationale behind this construct is to create an objective benchmark that reflects
real-world market conditions without veering into extremes of carelessness or hyper-
awareness.

A key feature of the average consumer in EU jurisprudence is the acceptance that their
recollection of trademarks is inherently imperfect. Unlike a side-by-side comparison made in
legal proceedings, consumers in the marketplace generally rely on memory and overall
impression. Consequently, minor differences in marks may go unnoticed, and confusion may
arise if the marks share visual, phonetic, or conceptual similarities. This concept was articulated

53
by the Court of Justice of the European Union (CJEU) in Lloyd Schuhfabrik Meyer & Co.
GmbH v. Klijsen Handel BV, where the Court emphasized that consumers rarely have the
opportunity to make direct comparisons and must rely on an imperfect recollection of the mark.

This approach ensures that the evaluation of potential confusion is grounded in consumer
behavior as it naturally occurs, rather than in artificial or overly precise comparisons. It allows
courts and intellectual property offices to assess the likelihood of confusion in a realistic and
pragmatic manner, taking into account how consumers actually perceive, remember, and
associate brand names and logos in everyday transactions. Additionally, the standard of the
average consumer may vary depending on the nature of the goods or services involved—more
attention is expected in the case of high-value or specialist products, while a lower threshold
may apply for routine consumer goods. This nuanced approach enables a flexible yet principled
analysis of confusion risks, balancing trademark protection with market dynamics

In the case of Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV59, the Court of Justice
of the European Union (CJEU) emphasized that the likelihood of confusion should be assessed
from the perspective of the "average consumer," who is reasonably well-informed, observant,
and circumspect. This approach ensures that the evaluation reflects the general public's
perception rather than that of an expert or a particularly attentive consumer.

Imperfect Recollection

The concept of imperfect recollection acknowledges that consumers do not always recall
trademarks with precision. Instead, they may remember only parts of a mark or its general
impression. 60
The Court of Justice of the European Union (CJEU) has emphasized that the
average consumer must rely on the imperfect picture they have kept in their mind, rather than
conducting a detailed comparison. This principle is crucial in assessing the likelihood of
confusion, as it recognizes that even subtle similarities between marks can lead to confusion if
they evoke a similar overall impression in the consumer's mind.

59
Case C-342/97
60
"Average Intelligence & Imperfect Recollection of a Customer - Criterion Determining Passing-Off," Mondaq,
available at: https://www.mondaq.com/india/trademark/39764/average-intelligence-imperfect-recollection-of-
a-customer-criterion-determining-passing-off (last visited May 1, 2025).

54
In the case of General Court – MCO (IP) v EUIPO 61, “The General Court confirmed that even
a highly attentive public might believe, without directly comparing the marks, that the marks
at issue concern the same undertaking or economically linked undertakings. This reinforces the
application of the imperfect recollection principle in assessing the likelihood of confusion.”

Distinctive Character

The distinctive character of a trademark refers to its ability to identify the goods or services as
originating from a particular source. A mark with a high degree of distinctiveness whether
inherent or acquired through use enjoys broader protection. The CJEU has held that the more
distinctive the earlier mark, the greater the likelihood of confusion, even if the marks are not
identical. This is because consumers are more likely to associate similar marks with the same
source when the earlier mark is distinctive.

The EU employs a holistic and market-focused approach to assess the likelihood of confusion.
This involves considering all relevant factors together, such as the similarity between marks,
the similarity of goods or services, the distinctiveness of the earlier mark, and the perception
of the average consumer62. The principle of interdependence allows flexibility; for example, a
low similarity between goods may be offset by a high similarity between marks. This
comprehensive approach ensures trademark protection aligns with real-world consumer
perceptions and market realities.

4.4 Judicial Interpretations

Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV 63

This landmark decision established that the likelihood of confusion must be assessed globally,
considering all relevant factors, including the similarity of the marks, the similarity of the goods
or services, and the distinctiveness of the earlier mark. The Court emphasized that even a low
degree of similarity between the goods or services may be offset by a high degree of similarity
between the marks, and vice versa.

61
T-461/21
62
Ćemalović, Uroš, “Notions of Likelihood of Confusion and of Trademark with a Reputation in the
Harmonized EU Trademark Law,” Ius Novum, Vol. 9, No. 2, 2015, pp. 56–72.
63
Case C-342/97

55
Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc.64

In this case, the CJEU held that the reputation of an earlier mark must be taken into account
when assessing the similarity between the goods or services covered by the two marks. The
Court clarified that there may be a likelihood of confusion even where the public perception is
that the goods or services have different places of origin, provided that the public could believe
that the goods or services come from the same undertaking or from economically-linked
undertakings.

Sabel BV v. Puma AG 65

The Court ruled that the mere association which the public might make between two trade
marks as a result of their analogous semantic content is not in itself a sufficient ground for
concluding that there is a likelihood of confusion. The judgment highlighted the importance of
assessing the overall impression conveyed by the marks, bearing in mind their distinctive and
dominant components.

Kneipp GmbH v. EUIPO – Patou 66

The EU General Court confirmed that the earlier mark 'JOY' had a reputation in a substantial
part of the European Union, particularly in France concerning perfumery and fragrances. The
Court emphasized that the reputation of a trade mark is acquired progressively and may survive
even if it diminishes over time, provided there is still a certain 'surviving' reputation at the time
of filing the application for registration of the contested mark.

4.5 Market and Consumer Perspective

The European Union’s holistic approach to trademark law centers fundamentally on how the
relevant market and consumer perceive trademarks in real-world contexts. This perspective
moves away from a purely formalistic or mechanical analysis of trademark elements and
instead prioritizes the practical realities of marketplace interactions, consumer behavior, and
the overall impression that marks create in the minds of the average consumer.

64
Case C-39/97
65
Case C-251/95
66
Case T-157/23

56
1. The Central Role of the Average Consumer’s Perception

At the heart of the EU’s trademark evaluation framework lies the concept of the “average
consumer.” The Court of Justice of the European Union (CJEU) defines this consumer as
reasonably well-informed, observant, and circumspect, but not overly attentive or
exceptionally discerning. This construct is crucial because the likelihood of confusion between
trademarks is assessed primarily from the viewpoint of this hypothetical average consumer,
who represents the typical buyer in the relevant sector.

The average consumer’s perception determines the overall impression a trademark leaves
whether it be visual, phonetic, or conceptual and this impression shapes their purchasing
decisions. This approach was elucidated in the landmark case of Procter & Gamble Co. v
OHIM 67, where the CJEU highlighted that individual components of a trademark might not be
distinctive alone, but their overall combination can produce a distinctive impression. The Court
emphasized that trademarks should not be dissected element-by-element but appreciated as a
whole to reflect the consumer’s actual experience.

2. Emphasis on the Overall Impression Over Componential Analysis

The EU’s holistic approach insists on the importance of the overall impression created by the
trademark rather than a fragmented comparison of its individual components. This means that
even when certain words or elements within a trademark might be descriptive or common, their
particular arrangement, style, or presentation may imbue the mark with distinctiveness.

This principle is rooted in the economic reality of how consumers encounter brands in the
marketplace they rarely analyze trademarks in isolation but react to the total sensory and
cognitive impact of the mark. The Baby Dry 68case (Procter & Gamble Co. v. OHIM) serves as
a prime example, where the combination of words created a unique overall impression that
consumers recognized, despite the individual words being common or descriptive.

3. Economic Reality and Consumer Attention Levels

Another critical dimension of the EU’s holistic approach is the recognition of economic reality
specifically, the nature of the goods or services and the context of purchase that influence

67
Case C-383/99 P
68
Case C-383/99 P

57
consumer attention levels. The Court acknowledges that the degree of care and attention an
average consumer devotes to purchasing decisions varies widely depending on the product
category.

For example, consumers purchasing everyday, low-cost items like groceries or household
products typically exhibit lower attention and may make quicker, less scrutinized choices. In
such cases, even minor similarities between trademarks can cause confusion. Conversely, for
more expensive or specialized products, consumers are likely to exercise higher care,
potentially reducing confusion risk despite some mark similarities.

This nuanced understanding ensures that trademark protection reflects real-world buying
behavior and economic contexts rather than theoretical or overly rigid legal standards. It also
aligns trademark law with the underlying purpose of preventing confusion that would mislead
consumers or distort fair competition.

4. Consumer Behavior and Market Dynamics in Trademark Assessment

The EU approach also integrates consumer behavior and market dynamics into its assessment
framework. The notion that trademarks must be evaluated against the backdrop of actual
marketplace conditions is significant, as it grounds legal analysis in the practicalities of
commerce. For instance, the extent of the earlier mark’s reputation, its market share, and
consumer familiarity are factors that can influence the perception of similarity or confusion as
in case of Windsurfing Chiemsee Produktions v Boots69.

Moreover, the “global appreciation” or “global assessment” method requires weighing all
relevant factors collectively rather than in isolation. This includes not only the marks
themselves but also the target consumer group’s characteristics, the goods or services’ nature,
and how the marks coexist in the marketplace.

Conclusion

In sum, the European Union’s holistic approach to trademark evaluation, with its focus on the
market and consumer perspective, represents a sophisticated balance between legal principles
and economic realities. By centering the assessment on the overall impression created by

69
C-108/97 & C-109/97

58
trademarks and the perception of the average consumer tempered by the specific context of
purchase and consumer attention levels the EU ensures that trademark protection is meaningful,
practical, and aligned with the fundamental goals of preventing confusion and safeguarding
both consumer interests and fair market competition.

59
 CHAPTER 5

5.1 Doctrinal Differences

Trademark laws serve as a cornerstone in protecting brand identity and ensuring fair
competition. While both India and the European Union aim to safeguard trademark rights, their
legal frameworks exhibit notable differences.

In an increasingly globalized marketplace, the effectiveness and coherence of trademark law

are critical for ensuring brand protection, consumer trust, and fair competition. This chapter
undertakes a comparative analysis of India’s Trade Marks Act, 1999 and the European Union’s
trademark regime, with a particular focus on the conceptual and procedural differences in the
assessment of trademark similarity and the likelihood of confusion. While India follows a
statutory framework grounded in the principles of the Trade Marks Act, its interpretation often
depends heavily on judicial discretion and case-specific analysis. In contrast, the EU has
developed a more harmonized and structured regime through a combination of legislation
primarily the EU Trade Mark Regulation and the jurisprudence of the Court of Justice of the
European Union (CJEU), which emphasizes a holistic, consumer-focused approach.

The purpose of this chapter is to explore how the Indian and EU systems differ in their
treatment of key elements such as the standard of the average consumer, the treatment of visual,
phonetic, and conceptual similarities, and the methodology used to evaluate likelihood of
confusion. The EU’s “global appreciation” test requires an overall assessment of all relevant
factors, reflecting an integrated and realistic approach to consumer perception. Conversely,
Indian courts often adopt a segmented analysis or dominancy-based tests, leading to a less
predictable application. This comparative study not only highlights doctrinal divergences but
also examines the broader implications for brand owners, legal practitioners, and policymakers.
By understanding the strengths and limitations of each system, this chapter seeks to propose
reforms that would enhance consistency, clarity, and international alignment within the Indian
trademark regime.

Differences:

60
1. Basis of Trademark Rights: First-to-Use vs. First-to-File

India: Follows a "first-to-use" principle, where rights are established through actual use in
commerce. Even unregistered marks can be protected under common law through passing-off
actions.

EU: Adopts a "first-to-file" system, granting rights to the first party to register a trademark.
Use is not required at the time of application but is necessary to maintain the registration.

2. Distinctiveness and Deceptive Similarity

India: Emphasizes that a trademark must be capable of distinguishing goods/services and not
be deceptively similar to existing marks. The focus is on preventing confusion among
consumers.

EU: Requires that a trademark has distinctive character and is not descriptive or generic. The
assessment considers the overall impression of the mark on the average consumer.70

3. Assessment Approach: Dominant Feature vs. Holistic View

India: Often employs the "dominancy test," focusing on the prominent features of the marks
in question to assess similarity and potential confusion.

EU: Utilizes a holistic approach, evaluating the overall impression of the marks, including
visual, phonetic, and conceptual similarities, to determine the likelihood of confusion.

4. Use Requirements and Non-Use Revocation

India: Does not mandate periodic proof of use for maintaining registration. However, a mark
can be removed if not used for five consecutive years.

EU: Requires that a trademark be genuinely used within five years of registration and not be
unused for any continuous five-year period, failing which it may be revoked.

70
Reeti Agarwal & Rishi Raju, "Intellectual Property Rights and Competition Law: An EU and India Analysis,"
NLIU Law Review, available at: https://nliulawreview.nliu.ac.in/intellectual-property-rights-and-competition-
law-an-eu-and-india-analysis/ (last visited April 24, 2025).

61
5. Protection of Well-Known Marks

India: Provides protection to well-known trademarks, even if they are not registered in India,
recognizing trans-border reputation and preventing misuse on dissimilar goods/services

EU: Also protects well-known marks, with emphasis on the mark's reputation within the EU.
Protection extends to dissimilar goods/services if the use takes unfair advantage of or is
detrimental to the distinctive character or repute of the trademark.

6. Non-Conventional Trademarks

India: Recognizes non-conventional trademarks like sound marks, provided they can be
graphically represented. However, smell marks are not registrable due to representation
challenges.71

EU: Accepts non-conventional trademarks, including sound and smell marks, as long as they
can be represented in a clear, precise, self-contained, easily accessible, intelligible, durable,
and objective manner.

7. Opposition Proceedings

India: Allows opposition to a trademark application within four months from the date of its
publication in the Trademark Journal.

EU: Permits opposition within three months from the date of publication of the trademark
application.

8. Enforcement and Remedies

India: Offers both civil and criminal remedies for trademark infringement, including
injunctions, damages, and imprisonment.

EU: Provides civil remedies such as injunctions and damages but does not typically include
criminal penalties for trademark infringement.

Legal Aspect India European Union (EU)

71
Intepat Team, "Indian Trademark Law: Comparative Analysis With Europe And US," Mondaq, August 5, 2016,
available at: https://www.mondaq.com/india/trademark/516816/indian-trademark-law-comparative-analysis-
with-europe-and-us (last visited May 1, 2025).

62
 Basis of Rights First-to-use; rights through actual First-to-file; rights through
use registration
Distinctiveness Must distinguish goods/services; Requires distinctive character;
avoid deceptive similarity assesses overall impression
Assessment Dominant feature analysis Holistic evaluation of the mark
Approach (dominancy test)
Use No periodic proof required; non- Genuine use required within 5
Requirements use for 5 years can lead to removal years; non-use can lead to
revocation
Well-Known Recognizes sound marks with Accepts non-conventional marks if
Marks graphical representation; smell representation criteria are met
marks not registrable
Opposition 4 months from publication 3 months from publication
Period
Enforcement Civil and criminal remedies Primarily civil remedies; criminal
Remedies available penalties uncommon

The comparative framework of trademark law between India and the European Union (EU)
underscores distinct legal traditions and policy considerations that shape the nature of
trademark protection and enforcement in each jurisdiction. At the core of these differences lies
the foundational basis of trademark rights. India operates on a first-to-use principle, whereby
trademark rights are acquired through actual use in commerce, emphasizing the brand’s
connection to the market and consumer recognition. Conversely, the EU adheres to a first-to-
file system, granting rights upon registration, which reflects a more formalistic and predictable
model designed to streamline the administration of intellectual property rights across multiple
member states. These foundational differences significantly influence how legal claims are
structured, how businesses strategize their brand protection, and how courts interpret rights in
cases of conflict. For foreign brand owners and multinational companies, this divergence
necessitates a tailored approach to trademark acquisition and maintenance depending on the
region of operation.

When it comes to the substantive standards for trademark registrability and enforcement, the
EU adopts a more rigorous and holistic evaluative framework, requiring that marks exhibit
distinctive character and be capable of producing a unique impression on the average

63
consumer. The EU also leads in accepting a broader range of non-conventional trademarks,
such as sound, motion, or multimedia marks, provided that they are clearly and precisely
represented in the register. India, while increasingly recognizing the importance of
distinctiveness, still adheres closely to more traditional forms of representation and applies the
dominancy test to assess potential conflicts, focusing on the prominent feature of marks. The
difference in approach is also reflected in procedural matters such as the opposition period,
which is slightly longer in India (four months) compared to the EU (three months), and in the
treatment of well-known marks, where India allows recognition even without domestic
registration under certain circumstances. Furthermore, India’s enforcement framework is
notably broader, providing both civil and criminal remedies, whereas the EU emphasizes civil
recourse, with criminal sanctions being relatively rare.

Ultimately, these distinctions point to the importance of jurisdiction-specific legal strategies

for effective brand management. Businesses seeking protection in India must prioritize
evidence of actual use and local consumer recognition to establish and enforce their rights,
especially given the judiciary’s emphasis on market presence and goodwill. In the EU,
however, timely and strategic filing, along with maintaining records of genuine use, is critical
to preserving rights in the long term. These legal systems, though both rooted in the goal of
preventing consumer confusion and promoting fair competition, reflect varying emphases on
formalism versus pragmatism, administrative clarity versus judicial discretion, and preventive
registration versus responsive recognition. For trademark holders navigating both markets,
understanding these nuances is essential to mitigating risk and ensuring robust protection
across borders. In an increasingly globalized marketplace, harmonizing brand strategies to
align with local legal regimes remains not just prudent, but imperative.

5.2 Consumer Standard: "Ordinary prudent consumer" (India) vs.

"Average consumer who is reasonably well-informed" (EU).

Introduction

In trademark law, the standard of the consumer plays a pivotal role in determining the
likelihood of confusion between marks. India and the European Union (EU) adopt distinct
approaches in this regard. India employs the "ordinary prudent consumer" standard, while the

64
EU utilizes the "average consumer who is reasonably well-informed, observant, and
circumspect." This section delves into these standards, highlighting their application through
case laws and scholarly insights.

India: The "Ordinary Prudent Consumer" Standard

Indian courts assess trademark infringement and passing-off cases by considering the
perspective of an "ordinary prudent consumer"72 with average intelligence and imperfect
recollection. This standard acknowledges that consumers may not remember every detail of a
mark, leading to potential confusion.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.73, the Supreme Court emphasized
the need for heightened scrutiny in cases involving medicinal products, given the potential
health risks arising from confusion. The Court noted that even minor differences in trademarks
could lead to significant consequences when consumers are not fully aware or attentive.

Similarly, in Amritdhara Pharmacy v. Satya Deo Gupta74, the Court held that the phonetic
similarity between "Amritdhara" and "Lakshmandhara" was likely to cause confusion among
consumers, considering their imperfect recollection. The judgment underscored the importance
of evaluating the overall impression of the marks rather than dissecting their components.

The Delhi High Court, in M/S. ITC Limited v. Nestle India Limited75, reiterated this standard,
stating that the test for deceptive similarity involves assessing the likelihood of confusion from
the viewpoint of an average consumer with imperfect memory. The Court stressed that the
overall structural and phonetic similarities between the marks should be considered in
determining potential confusion

European Union: The "Average Consumer Who is Reasonably Well-

Informed" Standard

72
Rrahmon Salihu, "The Characteristics of the Average Consumer in Trade Mark Law," Academia.edu, available
at:https://www.academia.edu/32796171/The_Characteristics_of_the_Average_Consumer_in_Trade_Mark_La
w (last visited May 1, 2025)
73
[(2001) 5 SCC 73]
74
[AIR 1963 SC 449]
75
[2020]

65
The EU adopts a more nuanced approach, focusing on the "average consumer who is
reasonably well-informed, observant, and circumspect." This standard, established by the Court
of Justice of the European Union (CJEU), recognizes that consumers exercise a certain level
of attention and awareness when making purchasing decisions.

In Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV 76, the CJEU articulated this
standard, emphasizing that the average consumer's perception is crucial in assessing the
likelihood of confusion. The Court noted that the average consumer rarely has the opportunity
to make direct comparisons between marks and must rely on their general impression.

The Gut Springenheide and Tusky 77case further reinforced this standard, highlighting that the
average consumer's expectations and perceptions should guide the assessment of misleading
information in trademarks. The Court acknowledged that social, cultural, and linguistic factors
could influence consumer perception, necessitating a comprehensive evaluation.

Moreover, in Procter & Gamble v. OHIM78, the CJEU recognized that the level of attention
varies depending on the category of goods or services. For everyday consumer goods, the
average consumer's attention may be lower, whereas for specialized or high-value products,
the level of attention is higher.

Comparative Analysis

The Indian standard centers on the notion that consumers have imperfect recollection and may
be easily confused by similar marks, especially in critical sectors like pharmaceuticals. This
approach aims to protect consumers from potential harm arising from confusion.

Conversely, the EU standard assumes a more discerning consumer who is reasonably well-
informed and observant. This perspective allows for a more flexible assessment, taking into
account the nature of the goods, the context of the purchase, and the overall impression of the
marks.

While both standards aim to prevent consumer confusion, the EU's approach provides a more
detailed framework that considers various factors influencing consumer perception. India's

76
Case C-342/97
77
Case C-210/96]
78
Case C-468/01 P

66
standard, though more protective, may not account for the varying levels of consumer attention
across different product categories.

Understanding the consumer standard is essential in trademark law, as it directly impacts the
assessment of confusion between marks. India's "ordinary prudent consumer" standard
emphasizes protection against confusion, particularly in sensitive sectors. The EU's "average
consumer who is reasonably well-informed" standard offers a more nuanced approach,
considering the diversity of consumer behavior and the context of the purchase. Both standards
serve to uphold the integrity of trademarks and protect consumer interests, albeit through
different lenses.79

5.3 Approach to Evidence and Market Reality in Trademark Law:

Comparative Analysis of India and the European Union

Introduction

In trademark law, assessing the likelihood of consumer confusion is pivotal. Both India and the
European Union (EU) have developed distinct methodologies to evaluate evidence and market
realities, reflecting their unique legal traditions and consumer protection philosophies. This
analysis explores these approaches, highlighting key case laws and scholarly perspectives.

India’s Emphasis on Consumer Perception and Market Context

Indian trademark jurisprudence prioritizes the perspective of the "average consumer with
imperfect recollection.80" Courts focus on how consumers perceive marks in real-world
scenarios, considering factors like phonetic similarity, visual resemblance, and the overall
impression of the marks.

In Parle Products Pvt. Ltd. v. JP & Co.81, the Supreme Court emphasized that the overall
impression of the packaging should be considered, rather than a side-by-side comparison. The

79
"Benchmark of the Average Consumer in the Light of EU Law," Lawyr.it, available at:
https://www.lawyr.it/index.php/articles/international-focus/404-benchmark-of-the-average-consumer-in-the-
light-of-eu-law (last visited May 1, 2025).
80
"Role of Consumer Perception in Trademark Infringement," Legal Service India, available at:
https://www.legalserviceindia.com/legal/article-15057-role-of-consumer-perception-in-trademark-
infringement-.html (last visited May 1, 2025).
81
(1972) 3 SCC 289

67
Court held that even if individual elements differ, the overall similarity could lead to consumer
confusion.

Similarly, in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.82, the Court underscored
the importance of considering the nature of the goods, the class of purchasers, and the mode of
purchasing the goods. The case highlighted that in the pharmaceutical sector, even minor
differences in trademarks could lead to significant consequences due to the potential for
confusion.

Indian courts also recognize the role of consumer perception in the digital age. In Satyam
Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.83, the Supreme Court acknowledged that domain
names serve the same function as trademarks and that confusion arising from similar domain
names could lead to consumer deception.

European Union’s Structured Evaluation of Market Evidence

The EU adopts a more structured approach, focusing on the "average consumer who is
reasonably well-informed, observant, and circumspect.84" The European Court of Justice (ECJ)
emphasizes the importance of empirical evidence and market studies in assessing consumer
perception.

85
In Procter & Gamble Co. v. OHIM , the ECJ held that the combination of words "BABY-
DRY" was distinctive enough to be registered as a trademark, as it was not a common
expression in English and had a syntactically unusual structure. The decision highlighted the
Court's willingness to consider linguistic and market factors in determining distinctiveness.

The Windsurfing Chiemsee Produktions v. Boots 86 case further illustrates the EU's approach.
The ECJ ruled that geographic marks could be registered if the public associates the mark with
the trademark owner rather than the geographic area, emphasizing the significance of consumer
perception in the specific market context.

82
(2001) 5 SCC 73
83
(2004) 6 SCC 145
84
Anemaet, Lotte. "The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two
Stripes Are Similar to Three?" IIC, vol. 51, no. 2, 2020, pp. 187–213
85
Case C-383/99 P
86
Cases C-108/97 and C-109/97

68
In Intel Corporation Inc. v. CPM United Kingdom Ltd.87, the ECJ clarified the concept of
trademark dilution, stating that to establish injury to the distinctive character or repute of a
trademark, it must be shown that there is a change in the economic behavior of the average
consumer. This decision underscores the EU's reliance on empirical evidence to assess market
realities.

Comparative Analysis

India's approach is more intuitive, relying on judicial assessment of consumer perception

without necessitating empirical evidence.88 This method allows for flexibility and adaptability
to diverse market conditions. However, it may lack the precision that empirical data can
provide.

In contrast, the EU's methodology is more empirical, requiring concrete evidence to support
claims of consumer confusion or trademark dilution. This structured approach ensures a
thorough analysis but may be more resource-intensive and time-consuming.

Both India and the EU aim to protect consumers and trademark owners from confusion and
unfair competition. India's emphasis on the average consumer's perception allows for a more
flexible and context-sensitive approach, while the EU's reliance on empirical evidence provides
a structured and data-driven framework. Understanding these differing methodologies is
crucial for stakeholders operating in both jurisdictions.

5.4 Judicial Flexibility and Predictability in Trademark Law: A

Comparative Analysis of India and the European Union

Introduction

In the realm of trademark law, courts must navigate the delicate balance between two often
competing ideals: judicial flexibility and legal predictability. On one hand, flexibility
empowers the judiciary to adapt legal principles to the particular facts and evolving realities of
each case, which is vital in a rapidly changing commercial and technological landscape. On the
other hand, predictability in legal outcomes fosters consistency, transparency, and reliability

87
(Case C-252/07
88
Deceptive Similarity in Trademark," LawBhoomi, available at: https://lawbhoomi.com/deceptive-similarity-in-
trademark/ (last visited May 1, 2025).

69
qualities that are indispensable for commercial actors seeking to structure their conduct around
known legal rules.

This section provides a comparative analysis of how India and the European Union (EU)
manage this balance within their trademark jurisprudence. Through the lens of key case law
and scholarly commentary, the divergent approaches of these jurisdictions reveal differing
priorities that reflect not only legal philosophy but also broader socio-economic and
institutional frameworks. The discussion evaluates the strengths and limitations of each system
and reflects on the implications for stakeholders involved in the protection and enforcement of
trademark rights.

India: Emphasis on Judicial Flexibility

India’s trademark jurisprudence is marked by a high degree of judicial discretion. Courts in

India have frequently demonstrated a willingness to interpret trademark principles expansively,
in a manner that aligns with equitable considerations and evolving commercial practices. This
approach is exemplified in the landmark case of Cadila Healthcare Ltd. v. Cadila
Pharmaceuticals Ltd.89, where the Supreme Court laid down comprehensive guidelines for
assessing deceptive similarity between trademarks. The Court identified multiple factors,
including phonetic similarity, the nature of the goods, class of purchasers, and the mode of
purchasing, thereby emphasizing a fact-sensitive, context-driven assessment. Rather than
adhering to rigid formulae, Indian courts preferred a holistic examination of each dispute,
thereby showcasing judicial adaptability.

Similarly, in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.90, the Supreme Court extended
the concept of trademarks to domain names, recognizing the evolving nature of brand
identifiers in the digital age. In doing so, the Court displayed flexibility in applying existing
trademark principles to an emerging technological phenomenon, thus filling a legislative gap
and providing relief in a novel situation. These cases collectively underscore the Indian
judiciary’s inclination to interpret statutory provisions in light of contemporary developments,
enabling the legal system to remain responsive to societal and commercial change.

89
AIR 2001 SC 1952]]
90
2004 AIR SC 3540

70
However, such judicial flexibility is not without criticism. The adaptability that makes the
Indian legal system dynamic can also contribute to inconsistency. In cases with similar factual
matrices, courts may arrive at different outcomes based on subjective interpretation. For
example, in Moonshine Technology Pvt. Ltd. v. Tictok Skill Games Pvt. Ltd 91, the Delhi High
Court’s decision hinged significantly on nuanced contextual details, such as the defendant’s
intent and market dynamics. While the outcome may have been justified on equitable grounds,
it diverged from precedent and highlighted the uncertainty inherent in a flexible judicial model.

This variability can create challenges for businesses and legal practitioners attempting to assess
the strength of their trademark claims or predict judicial outcomes. The lack of uniform
application of legal principles may deter foreign investors or brand owners, who may view the
system as unpredictable or dependent on discretionary factors. Thus, while India’s flexible
approach promotes innovation and responsiveness, it may also risk undermining the legal
certainty necessary for stable commercial planning.

European Union: Striving for Predictability

In contrast, the European Union has developed a more structured and rule-bound system of
trademark adjudication. Administered through the European Union Intellectual Property Office
(EUIPO) and subject to oversight by the General Court and the Court of Justice of the European
Union (CJEU), the EU's trademark regime prioritizes uniformity and legal certainty. This
structured approach is rooted in the desire to ensure harmonization across Member States and
to foster a predictable legal environment conducive to intra-EU trade.

92
In Procter & Gamble Co. v. OHIM , the General Court emphasized the necessity of a
trademark possessing inherent or acquired distinctiveness for registration. The Court held that
the mark “BABY-DRY” was descriptive and therefore not registrable, reinforcing the EU’s
high standards for registrability. This case illustrates the EU's tendency to apply clear and
objective criteria, thereby minimizing judicial discretion and ensuring that similar cases are
treated alike.

91
Case C-383/99 P
92
Case C-383/99 P

71
Similarly, in Intel Corporation Inc. v. CPM United Kingdom Ltd.93, the CJEU elaborated on
the requirements for establishing trademark dilution. The Court introduced the “link” test,
which requires that the relevant public make a connection between the contested mark and the
earlier reputed mark, even in the absence of confusion. This analytical framework provides
clear guidance for future litigants and courts, enabling greater predictability in the application
of dilution doctrine.

The EU's preference for codified standards and objective legal tests enhances transparency and
reduces the risk of inconsistent judgments. Businesses operating within the EU can generally
anticipate how courts will interpret particular legal issues, allowing them to make informed
decisions about branding, marketing, and enforcement strategies. This environment is
particularly attractive to multinational companies that value stability and legal certainty.

Nevertheless, this predictability may come at the cost of flexibility. The rigid application of
legal standards may not always accommodate the unique or evolving nature of certain
trademark disputes. In circumstances where innovative branding methods or new commercial
realities are at play, the judiciary's reluctance to depart from established doctrine may hinder
the protection of legitimate interests. Thus, while the EU's structured framework ensures
fairness and consistency, it may struggle to keep pace with the rapid transformation of global
trade and digital commerce.

Comparative Evaluation and Implications

The divergent approaches of India and the EU illustrate a fundamental trade-off between
flexibility and predictability in trademark law. India’s jurisprudence, grounded in equitable
considerations and practical realities, offers room for judicial innovation and adaptability. This
has enabled the Indian judiciary to extend trademark protection to novel contexts, including
digital platforms and cross-border disputes. However, this very adaptability introduces a degree
of uncertainty, with businesses often uncertain about how legal principles will be applied in a
given case.

Conversely, the EU’s emphasis on structure and consistency fosters a stable legal environment
in which commercial actors can plan with confidence. While this approach enhances legal

93
252/07, [2009] E.T.M.R. 17 (CJEU)

72
certainty, it may be less responsive to unconventional or unforeseen scenarios, potentially
leading to outcomes that are technically correct but practically inadequate.

A balanced system would ideally combine the strengths of both models ensuring sufficient
predictability to guide commercial behavior while preserving the capacity for judicial
innovation when necessary. However, the optimal balance between these objectives depends
heavily on institutional design, legal culture, and policy priorities within each jurisdiction.

For brand owners and legal practitioners, understanding these systemic differences is essential
for crafting effective cross-border trademark strategies. In India, proactive engagement with
the market—through advertising, sales, or even litigation may be necessary to build a
persuasive factual record. In the EU, the focus should be on securing early registration,
maintaining continuous use, and adhering to formal requirements.

Conclusion

The comparative study of India and the EU in the context of judicial flexibility and
predictability reveals two distinct models of trademark adjudication. India favors a flexible,
context-sensitive approach that can accommodate the complexities of modern commerce but
may result in inconsistent legal outcomes. The EU, by contrast, upholds a structured and
predictable system that ensures legal uniformity but may occasionally sacrifice adaptability.
Both systems offer valuable lessons and reflect different philosophies of legal governance. For
stakeholders operating in global markets, an appreciation of these differences is essential to
navigating the complex terrain of international trademark protection.

73
 CHAPTER 6

6.1 Real-World Impact: How the differences affect businesses and brand
protection.

India's Trademark Law

India follows a "first to use" principle, recognizing transborder reputation even without
physical market presence. In Milmet Oftho Industries v. Allergan Inc94., the Supreme Court
upheld the foreign plaintiff's rights over the "Ocuflox" mark, emphasizing global reputation
over local use. Similarly, in N.R. Dongre v. Whirlpool95, the Court protected the "Whirlpool"
mark based on its international reputation, despite its absence in the Indian market. However,
a shift occurred in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd96., where the
Court emphasized the need for substantial evidence of reputation within India, aligning with
the territoriality principle.

EU's Trademark Approach

The EU emphasizes the "first to file" principle, requiring genuine use within the EU to maintain
97
trademark rights. In Procter & Gamble Co. v. OHIM , the Court held that "BABY-DRY"
lacked distinctiveness, denying its registration. In Intel Corporation v. CPM United Kingdom
Ltd.98, the Court introduced the "link" test for dilution, requiring proof of a connection in
consumers' minds between the marks and potential harm to the earlier mark's distinctiveness.

A study in the Journal of Intellectual Property Law & Practice 99notes India's shift towards the
territoriality principle, potentially disadvantaging foreign entities lacking local presence.
Conversely, the EU's stringent requirements for genuine use and distinctiveness aim to prevent
trademark dilution and protect consumer interests.

While India's recognition of transborder reputation offers broader protection for global brands,
recent judicial trends indicate a move towards requiring local market presence. The EU's

94
(2004) 12 SCC 624; AIR 2004 SC 3355.
95
996 (16) PTC 583 (SC); AIR 1996 SC 2065
96
(2018) 2 SCC 1.
97
C-383/99 P, [2001] ECR I-6251.
98
C-252/07, [2008] ECR I-8823.
99
Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 6, pp. 442–449

74
approach, emphasizing genuine use and distinctiveness, provides a structured framework for
brand protection. Businesses must navigate these differences to effectively safeguard their
trademarks in both jurisdictions.

6.2 Cross-Border Enforcement Challenges: Multinational Brand Strategy

Concerns in India and the EU

India's Trademark Law: Evolving from Universality to Territoriality

In the context of globalization, the protection and enforcement of intellectual property rights
particularly trademarks have become increasingly complex, especially for multinational
corporations operating across diverse jurisdictions. India, a rapidly growing market with
increasing commercial relevance, has historically presented an interesting blend of common
law traditions and statutory frameworks in its approach to trademark law. The doctrine of trans-
border reputation once featured prominently in the Indian judiciary’s reasoning, allowing
foreign entities to enforce their trademark rights even in the absence of commercial activity
within Indian borders.

Under this approach, courts gave considerable weight to the global goodwill of a mark. The
landmark case N.R. Dongre v. Whirlpool Corporation100 serves as a foundational precedent in
this context. The Supreme Court of India upheld Whirlpool’s claim to the “WHIRLPOOL”
mark, despite the brand not having an extensive sales network in India at the time. The Court
recognized the brand’s significant international repute, which had penetrated the Indian
consumer consciousness through advertisements and global brand exposure. This ruling
effectively laid the groundwork for the acknowledgment of trans-border reputation in India.

Similarly, in Milmet Oftho Industries v. Allergan Inc101, the Supreme Court continued to favor
the doctrine of universality in trademark protection. The case involved the pharmaceutical
trademark "OCUFLOX," owned by the U.S.-based Allergan Inc. Despite the absence of a
product launch in the Indian market, the Court granted protection to the mark on the basis of
its global recognition. It emphasized that permitting Indian entities to exploit such

100100
(1996) 5 SCC 714
101
(2004) 12 SCC 624; AIR 2004 SC 3355.

75
internationally reputed marks would not only be unethical but could also deceive Indian
consumers who associate such names with trusted foreign brands.

However, this liberal approach has undergone significant recalibration in recent years. The
decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.102 marked a
watershed moment in Indian trademark jurisprudence. The case revolved around the Japanese
automobile giant Toyota’s attempt to claim exclusive rights over the “PRIUS” mark in India.
Toyota had argued that the Prius model was globally acclaimed and that Indian consumers, due
to their exposure to international media, were familiar with the mark. Nonetheless, the Supreme
Court rejected the claim, asserting that Toyota had failed to provide sufficient evidence of the
mark’s reputation and goodwill within India prior to the local use by Prius Auto Industries. The
Court thereby underscored the principle of territoriality, shifting the legal focus from
international recognition to actual consumer awareness and goodwill within Indian territory.

This decision marked a departure from the earlier trajectory of Indian jurisprudence, signaling
a more stringent and localized approach to trademark enforcement. It underscores a growing
judicial insistence on proof of substantial domestic presence and recognition, thus raising the
threshold for foreign entities seeking trademark protection in India without engaging in active
commercial operations within the country. Such a shift has prompted legal scholars and
practitioners to re-evaluate brand protection strategies, particularly for multinational
corporations that traditionally relied on global reputation alone to assert rights in developing
jurisdictions.

EU’s Trademark Framework: Emphasis on Use and Distinctiveness

In contrast to India's evolving stance, the European Union maintains a relatively harmonized
and structured framework for trademark protection. The EU Intellectual Property Office
(EUIPO), along with the judicial oversight of the Court of Justice of the European Union
(CJEU), follows a “first-to-file” system. However, mere registration does not suffice for
indefinite trademark protection. The EU trademark regime mandates genuine use of the mark
within the Union, typically within five years from the date of registration, to maintain
enforceability.

102
2018) 73 PTC 1 (SC)

76
The EU approach is characterized by a strong emphasis on distinctiveness and consumer
perception. The case Procter & Gamble Co. v. OHIM103 is a prime illustration of the EU’s
insistence on inherent distinctiveness. In this case, the General Court denied registration of the
term “BABY-DRY” for diapers, ruling that the mark lacked sufficient distinctiveness. Despite
the term being imaginative to a degree, the Court held that it was too descriptive of the
product’s intended purpose and thus incapable of functioning as a source identifier. This case
underscores the EU’s commitment to preventing monopolization of generic or descriptive
terms through trademark registration.

Another seminal case in the EU context is Intel Corporation Inc. v. CPM United Kingdom
Ltd104, which elaborated on the legal doctrine of dilution and the “link” test. The CJEU ruled
that for a claim of trademark dilution to succeed, it is essential to establish that consumers
mentally associate the later mark with the earlier, reputed mark even if there is no likelihood
of confusion. Intel was unable to prove that the use of the later mark caused actual or potential
harm to the distinctiveness or reputation of its own mark. This ruling emphasized the need for
objective evidence of harm or the likelihood thereof, reinforcing the EU's exacting standards
for trademark protection.

In essence, the EU’s trademark regime is anchored in the principles of actual use, public
perception, and evidentiary rigor. Rights are maintained not merely through registration, but
through continued and genuine use of the mark in commerce. The legal system favors a
consumer-oriented perspective, requiring proof that the trademark serves its essential function
of indicating origin and preventing consumer confusion.

Comparative Analysis and Strategic Implications for Multinational Brands

The divergence between India and the EU in their treatment of trans-border trademark rights
presents significant strategic implications for multinational corporations. A comparative
reading suggests that while the EU adheres to formalistic and procedural rigor focusing on use
and distinctiveness India has moved from a more lenient recognition of global goodwill to a
stricter requirement of domestic market presence.

103
Case C-383/99 P
104
252/07, [2009] E.T.M.R. 17 (CJEU)

77
A study published in the Journal of Intellectual Property Law & Practice (2018) reflects on
this jurisprudential transition in India, particularly in the aftermath of the Toyota Prius decision.
It argues that the Indian judiciary’s current trajectory could place foreign trademark holders at
a disadvantage, especially those who operate under a phased market entry strategy or prioritize
brand visibility before formal product launches. The study concludes that while early decisions
like Whirlpool and Allergan championed international reputation, recent rulings indicate an
unmistakable drift toward the territoriality principle—requiring demonstrable local goodwill
as a precondition for protection.

For multinational companies, this trend signals the need to recalibrate trademark enforcement
strategies across jurisdictions. In India, the emphasis must now shift towards establishing an
operational or reputational footprint—whether through advertising, market research, or
preliminary sales activity to lay the groundwork for legal protection. In the EU, meanwhile,
the focus must remain on prompt registration and consistent use, coupled with rigorous
documentation of consumer perception and brand impact.

Cross-border enforcement of trademark rights in India and the EU reflects contrasting legal
philosophies and practical enforcement mechanisms. The Indian evolution from a universal to
a territorial approach, and the EU’s steadfast commitment to use-based rights, highlight the
challenges of navigating multinational brand strategy in a fragmented legal landscape. For
global companies, understanding and adapting to these jurisdiction-specific requirements is not
merely a matter of compliance, but a critical component of risk mitigation and long-term brand
sustainability.

Strategic Implications for Multinational Brands

In India: Emphasis on Territorial Reputation and Use

India's trademark jurisprudence has evolved from recognizing trans-border reputation to

emphasizing the territoriality principle. While earlier decisions, such as N.R. Dongre v.
Whirlpool Corporation105 and Milmet Oftho Industries v. Allergan Inc106., upheld trademark
rights based on international reputation without local use, the Supreme Court's decision in

105
996 (16) PTC 583 (SC); AIR 1996 SC 2065
106
2004) 12 SCC 624; AIR 2004 SC 3355.

78
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.107 marked a shift. In this case,
the Court held that mere international reputation was insufficient; the trademark owner must
demonstrate substantial goodwill and recognition within India to claim protection.

Strategic Implications:

 Establish Local Presence: Foreign brands should consider initiating operations,

partnerships, or licensing agreements in India to build and demonstrate local goodwill.
 Document Marketing Efforts: Comprehensive records of advertising, media
coverage, and consumer engagement within India can serve as evidence of reputation.
 Monitor and Enforce Rights: Regularly monitor the Indian market for potential
infringements and be prepared to enforce rights through legal action when necessary.

EU European Union: Necessity of Genuine Use and Distinctiveness

The EU operates under a "first-to-file" system, but maintaining trademark rights requires
demonstrating genuine use within the EU. Failure to use a trademark for a continuous period
of five years can lead to revocation. The Michael Kors v. TECOM108 case underscores the
importance of providing concrete evidence of use, such as sales figures, advertising materials,
and market presence.

Strategic Implications:

 Active Use: Ensure that trademarks are actively used in the EU market in connection
with the registered goods or services.
 Consistent Branding: Use the trademark in a manner consistent with its registered
form to maintain its distinctiveness and avoid dilution.
 Maintain Records: Keep detailed records of trademark use, including marketing
campaigns, sales data, and distribution channels, to substantiate genuine use if
challenged.

107
Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 6, pp. 442–449
108
T-1053/23)

79
The divergent approaches in India and the EU necessitate tailored strategies for trademark
protection:

 India: Focus on establishing and evidencing local reputation and goodwill.

 EU: Prioritize consistent and genuine use of trademarks, ensuring they remain
distinctive and actively associated with the brand's goods or services.

Understanding these jurisdiction-specific requirements is crucial for effective cross-border

trademark enforcement and brand protection.

6.3 Role of Market Surveys and Empirical Evidence: Use and admissibility
in each system

Market surveys and empirical evidence play a pivotal role in trademark litigation, particularly
in establishing consumer perception, likelihood of confusion, and the distinctiveness or
reputation of a mark. Their admissibility and impact, however, vary between jurisdictions like
India and the European Union (EU).

In India: Discretionary Admissibility and Methodological Scrutiny

In India, while the Trade Marks Act, 1999, does not explicitly address the admissibility of
survey evidence, courts have considered such evidence in various cases. However, the
acceptance of survey evidence is discretionary and often hinges on the methodology employed.
Courts have emphasized the need for surveys to be methodologically sound, unbiased, and
relevant to the issues at hand. Poorly designed surveys or those lacking transparency in their
methodology may be disregarded.

For instance, in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.109, the Supreme Court
acknowledged the importance of consumer perception in determining the likelihood of
confusion between domain names, although it did not specifically rely on survey evidence.

Legal scholars have noted that while survey evidence can be instrumental in trademark
disputes, its effectiveness in India is contingent upon rigorous methodological standards. A
study published in the International Journal of Law Management & Humanities highlighted

109
2004 AIR SC 3540

80
that Indian courts often require surveys to be conducted by independent agencies, with a clear
explanation of the sampling methods and questions posed.

EU European Union: Structured Framework with Judicial Caution

In the EU, survey evidence is more systematically integrated into trademark litigation,
particularly in assessing distinctiveness and the likelihood of confusion110. The European Court
of Justice (ECJ) has, in cases like Windsurfing Chiemsee Produktions v. Boots111, recognized
the role of consumer perception in establishing the distinctiveness of geographical names as
trademarks.

However, EU courts approach survey evidence with caution. In Intel Corporation Inc. v. CPM
United Kingdom Ltd112., the ECJ emphasized the need for evidence demonstrating a change in
the economic behavior of the average consumer due to the use of a similar mark. While surveys
can support such claims, they must be robust and directly relevant to the legal questions posed.

A study published in the Journal of Intellectual Property Law & Practice113 analyzed the use
of empirical evidence in EU trademark law, concluding that while surveys are valuable, their
admissibility depends on strict adherence to methodological standards, including sample size,
neutrality, and relevance.

6.4 Recommendations for India

India's trademark jurisprudence has undergone significant evolution, particularly with the
Supreme Court's decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.114
This case marked a shift from the recognition of trans-border reputation to a more territorial
approach, emphasizing the need for establishing goodwill within India. While this aligns with
the principle of territoriality, it also underscores the necessity for a more holistic and consumer-
centric approach, akin to the European Union's (EU) trademark framework.

110
Oxford University Research Archive. "The Image of the Consumer in EU Trade Mark Law." ORA, 2013.
111
C-108/97 & C-109/97
112
C-252/07, [2008] ECR I-8823.
113
Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 6, pp. 442–449
114
(2018) 2 SCC 1

81
 EU Lessons from the EU: Embracing a Holistic Test

The EU's trademark system, governed by the European Union Trade Mark Regulation
(EUTMR), adopts a comprehensive approach in assessing trademark infringement and
protection. The Court of Justice of the European Union (CJEU) in Sabel BV v. Puma AG
115
established that the likelihood of confusion must be appreciated globally, considering all
relevant factors, including the interdependence between the similarity of the marks and the
goods or services. This holistic test ensures a balanced assessment, focusing on the overall
impression created by the marks on the average consumer.

In contrast, Indian courts have often relied on a more segmented analysis, sometimes leading
to inconsistent outcomes. Adopting the EU's holistic approach could enhance the consistency
and predictability of trademark adjudication in India.

Judicial Training and Guidelines: Enhancing Clarity

The complexity of trademark disputes necessitates specialized judicial understanding. In the

EU, judges handling intellectual property cases often receive specialized training, ensuring
informed and consistent decisions. India could benefit from similar initiatives, such as:

 Specialized IP Benches: Establishing dedicated benches for intellectual property cases

can lead to more consistent and expert adjudication.
 Judicial Training Programs: Implementing regular training sessions focusing on the
nuances of trademark law, including international best practices and consumer behavior
analysis.
 Comprehensive Guidelines: Developing clear guidelines for the admissibility and
evaluation of evidence, such as market surveys, can aid judges in making informed
decisions.

Such measures would not only enhance the quality of judgments but also build confidence
among stakeholders in the trademark enforcement system.

115
Case C-251/95, [1997] ECR I-6191

82
 Improving Consistency and Consumer Focus

A consumer-centric approach is pivotal in trademark law, as the primary function of a

trademark is to indicate the source of goods or services to consumers. The EU's emphasis on
the perception of the average consumer ensures that the assessment of confusion or dilution is
grounded in market realities.

Indian jurisprudence can incorporate this perspective by:

 Recognizing Consumer Perception: Giving due weight to how the average Indian
consumer perceives trademarks, considering factors like literacy levels, languages, and
purchasing habits.
 Admitting Empirical Evidence: Encouraging the use of market surveys and consumer
studies to provide empirical data on consumer perception and behavior.
 Consistency in Application: Ensuring that similar cases are adjudicated with
consistent reasoning, reducing unpredictability in trademark enforcement.

By aligning legal reasoning with consumer behavior and market realities, India can enhance
the effectiveness of its trademark protection regime.

83
 CHAPTER 7

7.1 Summary of Findings

This dissertation has critically examined the Likelihood of Confusion (LOC) test as applied in
Indian trademark law, focusing on its dual role in infringement (Section 29) and refusal of
registration (Section 11) under the Trade Marks Act, 1999. The research revealed several
important findings:

 The LOC test is not codified in Indian law, leading to judicial discretion and
inconsistency.
 Indian courts apply varied and often overlapping factors such as phonetic, visual, and
conceptual similarity; nature of goods; class of consumers; and marketing channels.
 Landmark cases like Cadila Healthcare116, Amritdhara Pharmacy117, and Renaissance
Hotel Holdings118 emphasize holistic consumer-oriented assessments but differ in
emphasis and application.
 The “average consumer” standard remains underdeveloped in Indian jurisprudence.
There is no clear statutory or judicial definition to guide consistent application.
 Comparative analysis with the European Union shows a more structured and
methodical approach, particularly through the “global appreciation” doctrine adopted
by the CJEU. The EU focuses on the overall impression of the marks in the context of
the average consumer with imperfect recollection.
 The Indian legal system, although influenced by international precedents, lacks a
standardized framework for judicial evaluation, creating uncertainty in litigation and
registration procedures.

Overall, while the LOC test is conceptually sound and judicially accepted, its implementation
in India suffers from ambiguity, subjectivity, and unpredictability.

116
AIR 2001 SC 1952
117
1954 AIR 44
118
2022 SCC 5 1

84
 5.2 Future of the Likelihood of Confusion Test in India

The future of the LOC test in India is poised for transformation, driven by increasing
globalization, judicial exposure to international practices, and pressure from growing
trademark disputes. Key trends and possibilities include:

 Codification of the LOC test through amendments to the Trade Marks Act or
publication of interpretive guidelines by the IP Office could reduce inconsistency.
 Increasing alignment with international jurisprudence, especially with the EU's “global
appreciation” model and the US multifactor test, could bring greater coherence.119
 More focused training and sensitization of judges and trademark examiners on modern
consumer behavior and branding could improve qualitative application.
 Technological advancements in AI-driven similarity assessments might eventually
inform trademark evaluations and minimize subjective bias.
 As more Indian brands achieve global status, the pressure to harmonize domestic legal
standards with international best practices will become imperative.

In short, the evolution of the LOC test in India must involve both legal reform and institutional
capacity building to achieve consistency and fairness in decision-making.

5.3 Recommendations for Legal Practice and Policy Development

To address the challenges identified and move toward a more efficient and equitable trademark
system, the following recommendations are proposed:

Legal Practice

1. Adoption of a structured LOC framework: Courts and tribunals should follow a

consistent checklist of factors when applying the LOC test, drawing on judicial
guidelines such as those in Cadila and Satyam Infoway.
2. Consumer perception surveys: Courts should admit and encourage consumer
perception surveys and market evidence to substantiate claims of confusion.

119
Ilanah Fhima & Dev S. Gangjee, The Confusion Test in European Trade Mark Law (Oxford University Press,
2019).

85
 3. Judicial training: Specialized training programs for judges handling IPR cases should
include international case studies and evolving branding techniques.
4. Promotion of mediation: Alternative dispute resolution, particularly in borderline cases
of confusion, should be promoted to reduce litigation backlog and encourage
settlement.

Policy Development

1. Issuance of formal examination guidelines by the Indian Trademark Registry to

establish clear parameters for determining confusion at the registration stage.
2. Codification of the “average consumer” standard through legislative or administrative
clarifications that define the demographic and psychological assumptions underlying
this standard.
3. Integration with global frameworks: India should consider entering mutual recognition
or cooperation treaties that ensure shared understanding of LOC standards in cross-
border trademark enforcement.
4. Awareness and accessibility: Policy measures should ensure that startups, MSMEs, and
rural enterprises understand trademark risks and are supported in enforcing their rights.

These steps will help bridge the gap between doctrinal theory and practical adjudication,
aligning Indian law with international benchmarks and supporting brand integrity in a
competitive economy.

5.4 Closing Remarks

The Likelihood of Confusion test lies at the heart of trademark law’s function to protect
consumers and uphold market order. In India, despite considerable judicial engagement, the
absence of statutory clarity and unified application undermines the certainty needed by brand
owners and legal practitioners.

The test’s evolution must move beyond mere judicial rhetoric and toward enforceable, uniform
standards. This will not only ensure fairer outcomes in individual cases but will also enhance
the credibility of India’s IP ecosystem in the global marketplace.

Comparative insights, particularly from the European Union, demonstrate that a structured,
consumer-centric approach when adopted systematically can yield coherence, predictability,

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and commercial fairness. The challenge for India is not one of concept but of execution and
standardization.

Ultimately, this dissertation hopes to contribute to ongoing debates around improving

trademark adjudication and to serve as a reference point for academics, practitioners, and
policymakers working to reform Indian IP law.

5.5 Suggestions on the Topic: Consumer Confusion and Market Realities:

Comparing India’s Trademark Jurisprudence with the European Union’s
Holistic Approach

1. Develop comparative studies that critically analyze Indian case law against the EU’s
jurisprudence under the “global appreciation” doctrine. This can help identify
convergence and divergence points.
2. Empirical consumer behavior research should be incorporated into trademark litigation
in India, similar to the EU’s reliance on economic evidence to assess consumer reaction.
3. Explore adoption of presumptions in Indian law such as confusion being presumed in
cases of identical marks for identical goods as followed under Section 29(3), and
expand it to similar marks in the absence of rebuttal.
4. Study the role of EUIPO’s guidelines as a model for India’s Trademark Registry to
develop a manual for examiners that includes examples, flowcharts, and sector-specific
confusion analysis.
5. Undertake socio-economic impact assessments of LOC decisions in India especially on
small businesses, MSMEs, and regional brands and explore how tailored reforms can
balance brand protection with market access.
6. Encourage cross-jurisdictional collaboration through academic exchanges and training
between Indian IP institutions and EU trademark authorities.

By adopting a holistic and comparative lens, future research and reform initiatives can ensure
that India's LOC jurisprudence matures into a more balanced, equitable, and predictable
framework that protects both consumer interests and brand investments.

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 BIBLIOGRAPHY

1.1 PRIMARY SOURCES

Statutes

 The Trade Marks Act, 1999 (India).

 European Union Trade Mark Regulation (European Union)

International Instruments

 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995.

1.2 SECONDARY SOURCES

BOOKS

 Cornish, W.R., Llewelyn, D. and Aplin, T., Intellectual Property: Patents, Copyright, Trade
Marks and Allied Rights, 8th ed., Sweet & Maxwell, London, 2013.

 McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, 4th ed., Thomson
Reuters, Minnesota.

 Wadhera, B.L., Law Relating to Patents, Trademarks, Copyright, Designs & Geographical
Indications, 6th ed., Universal Law Publishing, New Delhi, 2021.

 Narayanan, P., Law of Trade Marks and Passing Off, 6th ed., Eastern Law House, Kolkata,
2017.

RESEARCH PAPERS

1. Suvrashis Sarkar, History and Evolution of Trademarks in India (Research Paper, University
of Mumbai, Jamnalal Bajaj Institute of Management Studies, November 2016) Volume 6, Issue
11, ISSN 2249-555X.

2. Mahak Jain and Shivam Singh, Emerging Issues and Challenges in the Protection of
Trademark in India (2024) 4(3) International Journal of Advanced Legal Research ISSN 2582-
7340.

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3. Abhishek Yadav and Dr Jane Eyre Mathew, Protection of Trademarks in the Realm of
Deceptive Similarity: In the Age of AI (2024) 9(4) International Journal of Novel Research and
Development ISSN 2456-4184

4. Anemaet, Lotte. "The Many Faces of the Average Consumer: Is It Really So Difficult to Assess
Whether Two Stripes Are Similar to Three?" IIC, vol. 51, no. 2, 2020, pp. 187–213

5. Supreme Court of India supplants the doctrine of transborder reputation with the territoriality
principle in passing off actions, (2018) 13 JIPLP 442.

6. Oxford University Research Archive. "The Image of the Consumer in EU Trade Mark Law."
ORA, 2013.

7. Gangjee, Dev, "Non-Conventional Marks and the Problem of Meaning in Trademark Law",
(2014) 36(1) European Intellectual Property Review, pp. 15–22.

8. Journal of Intellectual Property Law & Practice, 2018

WEB LINKS

1. International Trademark System Talks, WIPO, available at:

https://www.wipo.int/en/web/podcasts/madrid/transcripts/international_trademark_system_tal
k_01

2. Section 9 of Trademarks Act, 1999 https://blog.ipleaders.in/section-9-of-trademarks-act-

1999/

3. Trademark Objection in India- Understanding Sections 9 and 11 with Case Studies

https://www.ilms.academy/blog/trademark-objection-india-understanding-sections-9-11-case-
studies \

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4. The Concept of Deceptive Similarity : Law & Public Policy
https://docs.manupatra.in/newsline/articles/Upload/D194E4A5-2785-4746-85A1-
8EE6B9C53655.2-A__IPR.pdf

5. Likelihood of Confusion Refusals – A deep dive into trademark refusals

https://www.cohnlg.com/likelihood-of-confusion-refusals-a-deep-dive-into-2d-trademark-
refusals/

6. "Windsurfing Chiemsee Produktions v. Boots,"

https://en.wikipedia.org/wiki/Windsurfing_Chiemsee_Produktions_v_Boots

7. Bridging Borders in Trademark Protection in India, available at :

https://www.ipandlegalfilings.com/bridging-borders-how-customs-laws-shape-trademark-
protection-in-india/

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