Source: Delhi High Court 

Why in News? 

A bench of Justice C Hari Shankar and Justice Ajay Digpaul has ruled against the usage of trademark BHARAT GATE as it is deceptively similar to the trademark INDIA GATE.           

• The Delhi High Court held this in the case of KRBL Limited v. Praveen Kumar Buyyani & Ors. (2025). 

What was the Background of KRBL Limited v. Praveen Kumar Buyyani & Ors. Case?  

• The appellant in this case was the registered owner of the trademark INDIA GATE, which has been in use for rice since 1993. 
• The respondents also started dealing with rice under the name BHARAT GATE. 
• The appellant approached the Commercial Court seeking permanent and mandatory injunction against the respondents using the trademark BHARAT GATE. 
• It was the case of the appellant there was infringement of trademark under Section 29 of the Trademark Act, 1999 (TMA). The plaint was accompanied with application under Order 39 Rule 1 and 2 of Civil Procedure Code, 1908 (CPC) seeking interlocutory injunction. 
• On 9th October 2020, the Commercial Court granted an ex parte ad interim injunction in favor of the appellants and against respondents.  
• The order passed on 9th January 2024 finally adjudicated the application filed under Order 39 Rule 1 and 2 and vacated the injunction granted. 
• It is against this order that the appellant moved to the Delhi High Court. 

What were the Court’s Observations?  

• The test for infringement of trademark is well settled i.e. the possibility of likelihood of confusion from the perspective of a customer of average intelligence and imperfect recollection. 
• Thus, the Court held that infringement is made out where there is deceptive phonetic, visual, or idea similarity between the marks. 
• The Court held that in the present facts the respondent besides using word mark which is phonetically similar and representing the same idea as the appellant’s mark, also copied the essential features of the appellant’s mark. 
• Even in cases where there is no visual similarity the Supreme Court held that there would be infringement because of phonetic similarity. 
• The Court held that in the present case the respondent has deliberately attempted to capitalize on the goodwill of the appellant.  
• Further, the Court held that the mark INDIA GATE cannot be dissected as laid down under Section 17 of TMA. 
• The Court finally in this case set aside the order of the Commercial Court. 

How can Deceptive Similarity be Ascertained? 

• Deceptive similarity in trademark law refers to a situation where one trademark closely resembles another, creating a likelihood of misleading or confusing the public. 
• This concept applies even if the two marks are not identical, as their similarity in appearance, sound, or meaning may lead consumers to wrongly associate them with one another. 
• The possibility of likelihood of confusion has to be assessed from the perspective of a customer of average intelligence and imperfect recollection 
• “Confusion”, again, need not extrapolate, in every case, to the consumer mistaking one mark for the other. 
• It is enough – as Section 29(4) of TMA itself clarifies – if the similarity between the marks conveys an impression of “association” between them, to the mind of such a consumer. 
• If on seeing the defendant’s mark some time after the first, the consumer of average intelligence and imperfect recollection is likely to pause, even if for the fraction of a minute, and ponder as to whether it was not the same, or at was not associated with, the plaintiff’s mark which he had seen earlier, the tort of infringement stands, ipso facto, committed by the defendant. 
• The infringement is made out where there is deceptive phonetic, visual or idea similarity between the marks. The presence of any one element, as is sufficient to confuse the consumer, would be sufficient. All other features of distinction would, then, pale into insignificance. 
• The marks, moreover, have to be compared as wholes, taking into account the essential features of the appellant’s mark.

What are the Landmark Cases on Deceptive Similarity? 

• Parle Products (P) Ltd v. JP and Co. (1972) 
  • It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. 
  • They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other 
  • It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him 
• Reckitt & Colman Ltd v. Borden Inc (1990) 
  • The Court in this case postulated the “trinity” or “triple identity test”, which deems infringement to exist where identical (or deceptively similar) marks are used for more or less identical products, having a common market. 
  • Similarity of marks, identity/similarity of the goods on which the marks are used, and commonality of market, therefore, predicate a legitimate inference of infringement. 
• KR Chinna Krishna Chettiar v. Shri Ambal & Co. (1969) 
  • In this case the Supreme Court was dealing with the marks “SRI AMBAL” and “SRI ANDAL”, used for snuff in both cases. 
  • The Court held that there was no visual resemblance between the two marks, however, the resemblance between the two marks must be considered with reference to the ear as well as the eye.