Identical or Similar Trademarks - How to Identify?

To have one’s enterprise stand out in the market and create a strong brand value, they must have their trademark. Developing a mark that is unique and eye-catching is not an easy venture. Trademarks in India are protected by the Trademarks Act, 1999 (hereinafter referred to as the “Act”). The Act protects all registered trademarks in India, from infringement and/or misuse.

Considering this fact, when creating a trademark to differentiate one’s goods or services from their competitors’, one has to follow the regulations laid down by the Act. The biggest hurdle one has to cross when they are trying to register a trademark is to ensure that their mark is not identical or similar to an already existing mark. Section 11 of the Act specifically deals with these kinds of situations, by disallowing the registration of similar or identical trademarks.

What are Identical Trademarks?

An identical trademark is classified as any mark that is a reproduction of an already registered trademark. For a trademark to be deemed as an identical trademark, it does not need to be an exact copy of another mark. If all elements of the mark are similar or if the mark, when viewed as a whole, contains differences that are unnoticeable by an average person* with imperfect recollection, the mark will be deemed to be identical.

What are Similar Trademarks?

Similar trademarks are those marks that are easily mistaken with another already existing mark. The word similar here is to be understood as deceptively identical. This means the mark that is so resembling of another that it is likely to confuse or deceive the average consumer. Here, the examiner for the application will only consider the ‘probability’*, and the question of whether it amounts to a reasonable confusion may arise.

How to Identify Similar or Identical Trademarks?

When you apply for the registration of a trademark, the application will be faced with multiple stages of scrutiny. Here, the Trademark Officer (examiner) will scrutinise the mark as well as the procedure of application. While scrutinising the mark, the examiner has to take into account these following points when judging similar or identical trademarks: – 

• Structural similarity
• Visual similarity
• Phonetic similarity
• Similarity of respective goods or services

Distinctiveness of registered mark While observing these points, the examiner also must: 
– Scrutinise the marks as a whole 
– Take into account the average intelligence and recall the ability of the public If he deems that there is a likelihood of the public confusing the two marks as one another, he will reject the application on relative grounds as prescribed in Section 11 of the Act.

Honest Concurrent Use of Trademark

The only way a similar or identical trademark can be registered is by using the defence of honest concurrent use, provided under Section 12 of the Act. The law, in this case, hands the power of decision to the Registrar. Therefore the allowance of honest concurrent use is up to the discretion of the Registrar.

The application of Section 11 (4)* and the ground rules for invoking it have been detailed in multiple landmark judgements such as Dent v. Turpin and Southorn v. Reynolds in the 1800s. In India, the law for honest concurrent use was first laid down in the case of Kores(India) Ltd. v. M/s Eshwarsa and Sons, which was in 1958. Here, five factors had been laid down to use the defence of honest and concurrent use. The factors that need to be considered are as follows:

• The extent of use regarding quantity, area and duration
• The honesty of concurrent use
• The degree of confusion that is likely to be caused which is indicative of the inconvenience that may be caused to the public
• Whether there exists evidence of such confusion
• The amount of relative inconvenience caused to either of the parties if the concurrent use is approved

Although Section 12 gives a chance for the permission of concurrent use, most cases have been in the negative. Almost all cases are decided against concurrent use due to the use of not being honest. Yet, in the case of Goenka Institute of Education and Research v. Anjali Kumar Goenka and Anr., the court allowed the defence of honest concurrent use due to the following facts:

• Both parties started using the term Goenka at around the same time
• One part was located in New Delhi and the other in Rajasthan and therefore could not have known the other use of the term
• The term Goenka formed part of the appellants’ trust name

Studying these facts of the case, the court came to the conclusion that the use of the term Goenka was an honest and concurrent use and therefore aloud continued usage to both parties.

Person*- Any average consumer or individual who views the mark.

Probability*- The likelihood or possibility that such confusion or misidentification of a mark takes place.

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