Deceptive similarity of marks is commonly argued by attorneys in the cases of trademark infringement and/or passing off. Deceptive similarity is a very broad term and includes phonetic similarity, visual similarity and conceptual similarity but, these are not the only factors that need to be taken into consideration while deciding cases of trademark infringement/passing off.
In the case of International Foodstuffs Co. v Parle Products Pvt. Ltd. the Plaintiff was the registered owner of the mark 'London Dairy' used for only for ice-creams. The Plaintiff sued the Defendant alleging that it had adopted a deceptively similar mark 'Londonderry' for candies. The Plaintiff's Advocate argued that there was phonetic similarity between the two marks and that both the marks were being used in relation to goods specified in class 30 therefore, increasing the likelihood of confusion in the minds of the public and infringing the Plaintiff's statutory right over its mark 'London Dairy'. RKD represented the Defendant in this matter and succesfully countered these allegations by proving that the words 'London' and 'Dairy' were publici juris i.e. no one could claim exclusive rights over the same; also, the goods for which the mark 'Londonderry' was being used were different from that of the Plaintiff's. RKD also succeeded in proving that the trade dress adopted by the Defendant for its candies was distinctive in nature and that the Defendant's house mark 'Parle' was clearly specified on the packaging, thereby removing the possibility of confusion, if any, between the two goods.
The Hon'ble Bombay High Court agreed with the submissions of our lawyer and held that if a mark was being used solely for ice-creams and no other goods, the proprietor of the mark could not claim monopoly over the use of the mark for the unrelated goods. Furthermore, the Court took into account the price difference between the goods, the Plaintiff's ice cream was priced at Rupees 80 whereas, the Defendant's candies were priced at 50paise. This showed that there was no remote possibility of confusion between the two goods. The Court reiterated that while determining deceptive similarity between goods it is also necessary to consider the trade channel and the goods in question, trademark laws do not grant an absolute monopoly over the entire class of goods if the mark is not being used for such goods.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
