Test For Deceptive Similarity Of Trade Marks

The test for deciding the deceptive similarity of the competing mark in an action for
infringement or in an action of passing off are similar. In the case PARLE PRODUCTS (P) LTD.
V J.P. & CO. MYSORE2, it was held that "the test for determination of a trade mark to be
deceptively similar to the registered one would be, if a person would be likely to accept the
another one, if offered, instead of original one".

In the case of a statutory right, once the Court comes to the conclusion that the defendant has
adopted a mark, which is identical or deceptively similar mark to the registered mark and is used
in respect of same or similar goods, no further evidence is required to be produced by the
registered proprietor of the mark to establish infringement. On the other hand, if a person seeks
to enforce common law rights based on prior use, the defendant may escape liability by showing
that the added matters used in conjunction with the mark are capable of distinguishing his goods
from those of the others.

The factors to be taken in consideration for the deceptive similarity are as follows:

i. The nature of the marks i.e. whether coined/ descriptive/ non-descriptive/ surname/
geographical origin/ device/ letters/ numerals/ combination of two or more of the above
ii. The degree of resemblance between the competing marks and essential features thereof
i.e. phonetic, visual or structural.
iii. The nature of the goods in respect of which they are used or likely to be used as trade
marks.
iv. The similarity of the nature, character, and purpose of the goods of the rival traders.
v. The class of purchasers who are likely to buy the goods bearing the marks.
vi. The mode of purchase of the goods or of placing orders for the goods.

Any other surrounding circumstances

In Bombay Metal Works (P) Ltd v. Tara Singh & Ors 2006 (33) PTC (Bom.)(DB), is one
such case where even after obtaining an injunction, the plaintiff is forced to make attempts to
sustain the protection of marks.

Facts of the case

Tara Sing & Ors were restrained by an injunction order, from manufacturing, selling, offering for
sale, advertising directly or indirectly dealing in cycle parts under the impugned Ball Head
Racers and Screw Head Racers or any other packing which could be substantially similar to that
of Bombay Metal Works Ltd.

Despite the said order, Tara Singh continued the manufacturing and selling of the goods there by
violating the said order. Aggrieved by the non-compliance of the order, Bombay Metal Works
filed a contempt application under section 2 (a), 11 and 12 of the Contempt of the Court Act.
Surprisingly the Judge not only rejected the contempt application, but also gave a finding that the
impugned packaging of Tara Singh cannot be considered as deceptively similar to the packing of
the Bombay Metal Works. Aggrieved by the said order, Bombay Metal works preferred the
appeal.

Contentions

The main contention of the Tara Singh was that the appeal is not maintainable and that it shall lie
to the High Court only if the contemnor has been punished and not in any other case. On the
other hand, Bombay Metal Works contented that they have filed the appeal not as contempt
appeal but as the First Appeal Order (FAO) and hence it is maintainable.

Judgment

The Appeal court on perusal of earlier single bench orders found that the parties had virtually
settled their dispute and Tara Singh had given an undertaking that they shall change the color
scheme and out look of their packaging. The Appellate Court further opined that as Tara Singh
had agreed to change the color scheme and design of the packing, there is a prima facie breach of
an interim injunction order and hence Tara Singh & Ors are estopped from acting contrary to
their undertaking. Holding the above line, the Court upheld the appeal.

This case underlines the difficulty of protecting the marks. The undertaking by the respondents
in the case itself proves that they are accepting that their packing is deceptively similar to that of
the appellants. One of the significant tactics primarily applied by new manufactures is to pass off
their goods as that of another. The trademark holder needs to be alert of the infringements and
the prospective infringements. Close monitoring of the developments has emerged as a key
factor. Timely judicial intervention is another prime factor that has become inevitable to the
protection of a trademark.

As per US Trademark Act of 1946, Title VI- Remedies

§ 32 (15 U.S.C. § 1114). Remedies; infringement; innocent infringers (

1) Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; or

(b) reproduce, counterfeit, copy or colorably imitate a registered mark and apply such
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or services on orin connection with
which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a
civil action by the registrant for the remedies hereinafter provided.
 Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that such imitation is intended to be used to
cause confusion, or to cause mistake, or to deceive. As used in this paragraph, the term ―any
person‖ includes the United States, all agencies and instrumentalities thereof, and all individuals,
firms, corporations, or other persons acting for the United States and with the authorization and
consent of the United States, and any State, any instrumentality of a State, and any officer or
employee of a State or instrumentality of a State acting in his or her official capacity. The United
States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other
persons acting for the United States and with the authorization and consent of the United States,
and any State, and any such instrumentality, officer, or employee, shall be subject to the
provisions of this chapter in the same manner and to the same extent as any nongovernmental
entity

Rights and limitations of a patentee

Rights of a Patentee
The owner of the "Patent", i.e. patentee is entitled to deal with such property in the same manner
as owner of any other moveable property.
a. The patentee can sell the whole or part of this property (Patent).
b. He can also grant license to other(s) to use the patented property.
c. He can also assign such property to any other(s).
Such sale, license or assignment of such patented property naturally has to be for valuable
consideration, acceptable mutually.
 
Period of Patent
1. In respect of process patents relating to drugs and food, the term is five years from the
date of sealing the patents or seven years from the date of the patent whichever is shorter.
2. In respect of all other patents the term is fourteen years from the date of the patent. A
patent is kept alive only by paying the renewal fee from time to time

Rights and limitations of patentee

Patentee is a person for the time being entered in the register of patents as the grantee or
proprietor of patent. Patentee is the one to whom patent has been granted. Patentee is entitled to
deal with his such property in the same manner as the owner of any other movable property deals
with his property.

Rights of the patentee are enshrined under section 48 of the Patents Act, 1970.  All rights
granted to patentee are conditional which are imposed under section 47 of the Act.
Such conditions are : 1. Manufacture or import of the patented invention may be made by the
government for the purpose of its own use. 2. Any process in respect of which the patent is
granted may be used by or on behalf of the government for the purpose merely of its own use.

Any patented process/product may be used for the purpose of experiment or research or
imparting of knowledge to pupils. 4. In case of a patent in respect of any medicine or drug, the
medicine or drug may be imported by the government for the purpose merely of its own use or
for distribution in any dispensary , hospital or other medical institution maintained by or on
behalf of the government.

Patentee has been enshrined with following rights :

 Where the patent is for a product, the exclusive right to prevent third parties, who do not have
his consent, from act of making, using, offering for sale, selling or importing for those purposes
that product in India.

 Where the subject matter of patent is a process, the exclusive right to prevent third parties,
who do not have his consent, from the act of using that process, and from the act of using,
offering for sale, selling or importing for those purposes the product obtained directly by that
process in India.

The rights conferred under the Act are:

 To exploit the patent.

 To license the patent to another (sec.70).
 To assign the patent to another (sec.70).
 To surrender the patent to another(sec.63).  To sue for the infringement of the patent.

The Act provides certain limitations on the exercise of rights. They are: 1) Government use
of patent. 2) Compulsory licenses. 3) Use of inventions for Defence purposes. 4) Revocation for
non working of patents. 5) Restored patents.

1) Government use of patent: • Section 100 of the provides that at any time after the application
for a patent had been filed at the patent office or patent has been granted, the central government
may use the invention for government purposes. • May be used or even acquired for its own use.
• Can do without consent of patentee or even without payment of royalties. • Includes right to
sell.

2) Compulsory licenses • Section 84 stipulates that at any time after the expiration of three years
from the date of grant of patent, any interested person may make an application to the controller
for grant of compulsory license on patent, if the patent is not worked satisfactorily to meet the
reasonable requirements of the public, at a reasonable price.

3) Use of inventions for defence purposes • Such patents may be subject to certain secrecy
provisions.
 4) Revocation for non working of patents • A patent may be revoked in cases where there has
been no work or unsatisfactory result to the demand of public in respect of patented invention.

5) Restored patents • Once lapsed, a patent may be restored, provided that few limitations are
imposed on the right of the patentee.