PHONETIC SIMILARITY OF TRADEMARKS- A JUDICIAL TREND IN INDIA

A trademark can be differentiated and made for anything specific in the product. Sometimes, there are similarities in the sound or the phonetic pronunciation of the name of the product or the company. This concept is known as Deceptive Similarity.

Trademarks have been an old and upcoming development in the legal and technological field. With the oldest statute being formed in the 1940s and the latest one in 2010. As per Section 2(zb) of The Trade Marks Act, 1999, a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one owner from another and may include shape, packaging, and combination of colors of goods. 

Intellectual property has always been an evolving discipline. There have been judgments from all the levels of jurisdictional authority that have given a judgment on Trademarks leading to their development from time to time. The intention of forming a trademark act or evolving a concept of trademarks was to make sure that in the increasing competition in the economy, one has a fair chance of protecting and earning justified profits from the creation. 

Some of the famous examples of trademarks in India can be Whirlpool from the Whirlpool Corporation, USA; Honda from Honda Motor Co. Ltd., Intimate from Revlon Inc., and so on. These trademarks help in differentiating and creating a separate identity. 

A trademark can be differentiated and made for anything specific in the product. Sometimes, there are similarities in the sound or the phonetic pronunciation of the name of the product or the company. This concept is known as Deceptive Similarity. Deceptive Similarity, as per Section 2(1)(h) of the Trademark Act, 1999, where the mark is deceptively similar to another or resembles the other mark creating confusion or likely deceiving the stakeholders. The concept of phonetic similarity is mentioned in Section 29(9) of the Act, 1999. In the case of S.M. Dyechem Ltd. v. Cadbury India Ltd., it was held that the plaintiff needs to establish the infringement and the burden of proof lies on them in the account of the alleged deception. Some examples of phonetic similarities can be SEYCOS and SEIKO, or even ENTELEC and INTELLECT. 

Some of the trademark cases that have dealt with phonetic similarities are:

1. Indo-Pharma Pharmaceutical v. Citadel Fine Pharmaceutical[1]: When dealing with two 'Enerjex' and 'Enerjase' labels, the Madras High Court held that the abbreviation of a generic term would also be generic. The applicant is involved in the manufacture and sale of pharmaceutical medical preparations business. The respondent is also involved in the same company. A permanent injunction was filed by the appellant for restraining the respondent from violating the trademark ‘ENERJASE’. In this case, in Trademarks and Unfair Competition, reliance was put on the McCarthy extract. Since the 'Jase' and 'Jex' elements were entirely different, the injunction was denied to the claimant by the Court. Court held that ‘ENERJ’ is common in rival marks ‘ENERJEX’ and ‘ENERJASE’. However, the ‘JEX’ and ‘JASE’ are different, and a detail that the customers will focus on more. Hence, these two were not phonetically similar in nature. 
2. International Foodstuffs Co. LLC v. Parle Products Private Limited and Anr[2].: It was held in this case that there was no law that mentions that the phonetic similarity will suffice that weighs against any other violation and the want of demonstration of any foul practice or goodwill should be ignored because of phonetic similarity. In this case, the plaintiff sold ice cream under the mark of “LONDON DAIRY” since 2001, and the defendant used “LONDONDERRY” in 2011 to sell boiled confectionery sweets under the mark. The plaintiff filed for an injunction which was refused by the bench on the basis of mere phonetic similarity and nothing more. 
3. Mahendra and Mahendra Paper Mills Limited v. Mahindra And Mahindra Limited[3]: In this case, the plaintiff created a prima facie case by proving phonetic, visual, and structural similarity to their company’s name, which was not only a registered trademark but also the dominant and significant part of their trading activities. 
4. Marico Limited v. Agro Tech Foods Limited: In Class 3, the plaintiff registered trademarks 'LOSORB' and 'LOSORB' for various edible oil/ghee products along with the trademarks Sweekar and Saffola effective from 2001 and sought an injunction to prohibit the use of the word 'LOW ABSORB' together with the trademark 'Sundrop' in his edible oil produced by the Defendant account. The concern, in this case, was whether the user of the term 'LOW ABSORB TECHNOLOGY' by the Respondent in relation to its edible oil product amounts to the transfer of the products used by the unregistered trademark 'LOW ABSORB' by the Appellant. The court held that the phrase "LOW ABSORB" is a standard descriptive expression/adjective since it is not an invented word and may be a combination of two common English terms that define the product's existence. It certainly and instantly conveys the essence of the word that something that consumes less and is used in terms of edible oil is descriptive in that it refers to less absorption of oil or poor absorption of oil and is incapable of being distinctive. In view of the ratio defined in the case of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. and Ors., the appellant is not entitled to exclusive possession of the LOW ABSORB trademark.

Some examples of phonetic similar trademarks can be highlighted in the following cases:

1. Amritdhara Pharmacy v. Satyadeo Gupta[4]: The Supreme Court observed in this case that an average rational customer would purchase any medication based on phonetic similarity, the nature of the medication which the customer had either purchased before or was asked to purchase. ‘Amritdhara’ was held to be phonetically similar to ‘Lakshmandhara’ in the mentioned case.
2. Ranbaxy Laboratories v. Anand Prasad and 4 Others[5]: The Court held that the suffix ‘Win’ in ‘Fortwin’ and ‘Ostwin’ could lead to deception and confusion.
3. M/S Lakme Ltd. v. M/S Subhash Trading[6]: The High Court dismissed the appeal of the plaintiff on the basis that the plaintiff’s trademark ‘Lakme’ sounded very different from ‘LikeMe’ as it sounded different as well as the looks of the product were different.
4. SM Dyechem Ltd. v. Cadbury(India) Ltd.[7]: Plaintiff sold savories under the name ‘PIKNIK’ and the defendant sold chocolates under the name ‘PICNIC’. The court held them to not be similar based on the composition of words and differences in appearance.

The judicial procurements of phonetic similarities between two marks have provided us with a more robust and definitive approach to assessing phonetically similar trademarks. With each judgment, one gets a different approach to how phonetically similar marks can or cannot be accepted