Similar & Identical Trademarks in India - How to Identify Them Well?

 

It is imperative to have Registered Trademarks in place to have one’s business stand out in the market and create a significant brand value. However, developing a unique and eye-catching mark is not an easy task.

In India, trademarks are registered, protected, and enforced under the Trademarks Act of 1999 (referred to as the ‘Act’ further in this article). The Act safeguards all registered trademarks from misuse or infringement in India. Considering this aspect, an individual or a company needs to follow all the rules and regulations laid in the Act while creating a trademark to differentiate their products or services from those of their competitors. The biggest challenge one has to overcome while going ahead with Trademark Registration is to ensure that their proposed trademark is not identical or similar to an already existing trademark. Section 11 of the Act particularly deals with these types of circumstances only by not permitting the registration of identical or similar trademarks.

Similar Trademarks – Similar trademarks are the ones that are easily mistaken with some already existing trademarks. The term ‘similar’ here can be understood or referred to as ‘deceptively identical.’ It implies that the mark in question resembles another existing trademark to such an extent that it is likely to deceive or confuse an average customer. For this, the examiner of a Trademark Application shall consider the aspect of probability, i.e., the possibility or likelihood of confusion or misidentification of the mark taking place.

Identical Trademarks – Identical trademarks are the ones that are a reproduction of some already existing registered trademarks. For a mark to be considered an identical trademark, it doesn’t need to be an exact copy of an already existing mark. If all the elements of the mark are similar, or when viewed as a whole, the mark consists of differences unnoticeable by an average person, it will be considered identical.

Identifying Similar & Identical Trademarks

When you apply for trademark registration, your Trademark Application shall go through various stages of inspection. The trademark officer or examiner shall thoroughly inspect your proposed trademark during the entire procedure of trademark registration. While inspecting the proposed trademark, the examiner shall take into account the following aspects for coming across similar and identical trademarks:

• Visual Similarity – Two trademarks having elements that appear similar in some way;
• Phonetic Similarity – Two trademarks sharing the phonetic similarity in sound;
• Structural Similarity – Two trademarks sharing the same underlying concept or idea that they imply or project; and
• The similarity of the respective products or services covered.

While observing these aspects, the examiner shall also:

• Inspect the proposed trademark as a whole (the trademark isn’t dissected and then compared – it is taken as a whole and then compared with the other mark); and
• Consider the average intelligence and take into account the ability of the public at large.

If he believes that there is a likelihood of confusion between the two marks in question as one another among people, he will reject the trademark application based on the relative grounds specified in Section 11 of the Act.

Understanding Honest Concurrent Use of Trademark under the Act

The only means using which an identical or similar trademark can be registered is through the defense of honest concurrent use, which is provided under Section 12 of the Act. In this scenario, the law hands the power of decision-making to the Registrar. Therefore, we can conveniently say that the allowance of honest concurrent use of a trademark lies in the judgment of the Registrar.

In India, the laws, rules, and regulations for honest concurrent use of a trademark were first laid down in 1958 in Kores (India) Ltd. v. M/s Eshwarsa and Sons. In this case, five factors were laid down concerning the defense of honest concurrent use of a trademark. The five factors that need to be considered are as follows:

• The extent of use of the mark concerning area, duration, and quantity;
• The honesty of concurrent use of the mark;
• The degree or extent of confusion likely to be caused, which is indicative of the inconvenience caused, if any, to the public;
• Whether or not there exists any piece of evidence concerning the aspect of confusion mentioned in the previous point; and
• The amount of relative inconvenience caused to either of the parties involved if the concurrent use of the mark gets approved.

While Section 12 of the Act does offer permission for concurrent use of a trademark, most lawsuits have been in the negative. Almost all the lawsuits are decided against concurrent use as trademark use is generally never proved honest. However, in Goenka Institute of Education and Research v. Anjali Kumar Goenka and Anr., the court permitted the defense of honest concurrent use of the trademark due to the points mentioned below:

• The parties involved started using the term ‘Goenka’ nearly around the same time.
• One party was New Delhi based, and the other was Rajasthan based; therefore, no party could have known the other party’s use of the term ‘Goenka.’
• The term ‘Goenka’ formed a part of the appellants’ trust names.

After observing and studying all the previously-mentioned points of the case, the court concluded that the use of the term ‘Goenka’ was honest and concurrent and therefore permitted its continued usage to both parties. ✅ For more visit: https://www.kashishipr.com/