Sound Advice: Navigating Phonetic Similarity in Indian Trademark Law

Introduction

Phonetic similarity is a crucial factor in trademark protection, influencing how consumers perceive and recall brands. Unlike visual or structural similarities, phonetic resemblance arises when two words sound alike, leading to potential confusion. This aspect is significant in trademark disputes, as courts often evaluate how a mark is pronounced rather than just how it appears.

As noted by Prof. McCarthy in his treatise on trademarks, "Marks may sound the same to the ear, even though they may be readily distinguishable to the eye." For instance, common English homophones like “sea” vs. “see” or “ate” vs. “eight” illustrate how pronunciation can blur distinctions between brands.

In India, Section 29(9) of the Trade Marks Act, 1999 explicitly states that trademark infringement can occur through spoken usage, not just visual representation. Indian courts have developed a robust jurisprudence around phonetic similarity, upholding or rejecting claims based on various factors. This blog explores notable case laws and the practical implications of phonetic similarity in trademark law.

1. Upholding Phonetic Similarity

Courts have consistently upheld claims of phonetic similarity in cases where the marks sound alike and could mislead consumers.

1.1 INDI vs INDEED (FMI Limited v. Midas Touch Metalloys Pvt. Ltd.)

In CS (COMM) 721/2024, the Delhi High Court ruled that the trademarks “INDI” (plaintiff) and “INDEED” (defendant) were phonetically, visually, and structurally similar. The court held that:

• The “EE” in “INDEED” produced a sound akin to the “I” in “INDI”.
• The addition of the letter “D” did not create a meaningful distinction.
• INDI had been in use since 2015, while INDEED was applied for only in 2023.
• The defendant’s AI-generated meaning of INDI as a short form for “India” was rejected.

1.2 INSEAD vs INSAID (Institut Europeen D’ Administration Des Affaires v. Fullstack Education Pvt. Ltd.)

In C.O. (COMM.IPD-TM) 1/2021, the Delhi High Court found “INSEAD” and “INSAID” phonetically similar, both being educational institutions. The court referenced the Pianotist Test, which assesses trademarks based on:

• Visual and phonetic similarity.
• Nature of the goods/services.
• Consumer perception and likelihood of confusion.

2. Rejecting Phonetic Similarity

In some cases, courts have determined that minor phonetic variations are sufficient to distinguish trademarks.

2.1 Variations in Syllables (ELEMENTIN vs ELEMENTAL)

In Elyon Pharmaceuticals Pvt. Ltd. v. Registrar of Trademarks, the Delhi High Court ruled that “ELEMENTIN” and “ELEMENTAL” were distinct because:

• “ELEMENTIN” had three syllables, whereas “ELEMENTAL” had four.
• “ELEMENTAL” was a commonly understood word, whereas “ELEMENTIN” was a coined term.

2.2 Differences in Prefix/Suffix (IBUFEN vs MEBUFEN)

In Abbott GmbH v. Registrar of Trademarks, the court found that “IBUFEN” and “MEBUFEN” were not phonetically similar because:

• The prefixes “IBU” and “MEBU” significantly altered pronunciation.
• The common suffix “FEN” was derived from “Ibuprofen,” which many drugs shared.

2.3 Pronunciation Differences (I-SEC vs ISID)

In International Student Identity Card Association v. Abhishek Tiwari, the court ruled that “I-SEC” and “ISID” were distinct because:

• “ISID” was pronounced letter-by-letter (I-S-I-D), while “I-SEC” was a single spoken word.
• The ruling emphasized that consumer pronunciation plays a crucial role in phonetic similarity assessments.

2.4 JENYA vs ZEGNA (Consitex S.A. v. Ms. Kamini Jain & Ors.)

The Delhi High Court found “JENYA” deceptively similar to “ZEGNA”, considering:

• The pronunciation “ZEN-YAH” was substantiated through sound recordings.
• The plaintiff held a registered Hindi transliteration of the mark.

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3. Challenges & Solutions in Phonetic Similarity Disputes

3.1 Objection under Section 11 (Likelihood of Confusion)

• Challenge: The Registry may raise an objection if a mark sounds similar to an existing one.
• Solutions:
• Use distinct visual elements like unique fonts, logos, or stylization.
• Demonstrate that goods/services differ significantly.
• Obtain a No Objection Certificate (NOC) from the prior trademark owner.

3.2 Opposition from Existing Trademark Owners

• Challenge: After publication, trademark owners can oppose similar-sounding marks.
• Solutions:
• Show peaceful market coexistence.
• Establish distinctiveness through usage.
• Negotiate a coexistence agreement.

3.3 Phonetic Similarity Across Different Classes

• Challenge: Even in unrelated industries, well-known trademarks can block registrations.
• Solutions:
• Prove that industries and consumer bases are distinct.
• Modify the mark with a unique prefix or suffix.

3.4 Delay in Registration Due to Examination & Litigation

• Challenge: Phonetic objections can lead to prolonged disputes.
• Solutions:
• Conduct comprehensive phonetic searches before filing.
• Respond with strong legal arguments.

3.5 Rejection in International Trademark Applications

• Challenge: International filings under the Madrid Protocol may face phonetic objections.
• Solutions:
• Ensure a globally distinctive brand name.
• Use the WIPO database for phonetic search before filing.

4. How to Overcome These Problems?

1. Conduct a Thorough Search: Use IP India, WIPO, and global trademark databases.
2. Seek Legal Advice: Consult trademark experts to assess risks and suggest modifications.
3. Alternative Branding Strategies: Add prefixes, suffixes, or use coined words.
4. Register in Multiple Classes: Protect branding even if one class faces phonetic objections.
5. Build Brand Recognition: Strengthen consumer association to establish acquired distinctiveness.

Conclusion

Phonetic similarity is a key aspect of trademark law, influencing registration, litigation, and enforcement. Indian courts evaluate similarity holistically, considering pronunciation, consumer perception, and market presence. Trademark owners must conduct thorough phonetic searches, remain vigilant about market usage, and adopt strategic branding to avoid disputes. By taking proactive steps, businesses can safeguard their intellectual property while navigating the complexities of trademark law.