The Delhi High Court has settled a 20-year legal battle between Shivkumar Shankarrao Thakur and Shiv Biri Manufacturing Company Private Limited regarding the issue of deceptive similarity between trademarks existing in the same class. The present case stands true to the classic test of deceptive similarity by considering key determining elements of the trademark, and the Court upheld the decisions made by the Registrar and the IPAB.
The appellant initiated the present suit challenging the Order dated October 11, 2017, passed by the Registrar of Trade Marks. The Registrar had rejected the appellant’s opposition to the Trademark 
(TM No.1068067) filed on December 20, 2001, claiming first use since January 01, 1987.
Before this, the appellant had initiated opposition proceedings and appealed before the IPAB against another trademark of the Respondent with TM Application No. 769516, which was filed on September 17, 1997. The opposition and appeal were dismissed as they lacked grounds to be heard. This trademark was registered along with a restriction to limit the sale of goods to states such as West Bengal, Assam, Bihar, Uttar Pradesh, Punjab, Haryana, Delhi, and Rajasthan. That being the case, the appellant argued that the subsequently registered trademark must be subjected to the same restrictions. It was also argued that the respondent could not claim use from January 01, 1987, when the earlier registered trademark was filed on a proposed to-be-used basis and that claiming such user date was done in bad faith.
In response, the respondent contended that the question of imposing a geographical limitation on the subsequent trademark does not hold any merits since the rival trademarks in question are entirely different from each other to the extent that it does not necessitate any further investigation, particularly when these issues were deliberated upon in both oppositions by the Registrar and the IPAB.
As per Section 2(h) of The Trade Marks Act, 1999, the concept of deceptive similarity in trademark is defined as –
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
An important factor in establishing deceptive similarity is whether the trademark is closely similar to an already existing mark such that the public with average intelligence gets confused regarding the source of the good or service. However, the Act does not give comprehensive guidelines for determining what is considered a deceptively similar trademark.
Hence, several judicial interpretations over time have helped in providing further clarity regarding the same, such as Corn Products Refining Co. v. Shangri-La Food Products Ltd., Wherein the Apex Court took into consideration three main aspects, which were:
- The trademark as a whole.
- The manner in which any person of average intelligence would perceive the mark.
- The imperfect recollection any person would have while associating the trademark with the product.
In another case of SM Dyechem Ltd. V. Cadbury (India) Ltd., the Court focused on the aspect of “Dissimilarity” rather than the aspect of “Similarity” as a test wherein the Apex Court analysed whether:
- There was no common or unique feature that had been copied.
- The dissimilarity of the elements of the impugned trademark was enough to make the product dissimilar.
- If there were common elements, would one pay more regard to the dissimilar elements while at the same time not disregarding the common parts?
Applying the same principles, the Hon’ble High Court of Delhi concurred with the decisions of the Registrar and the IPAB in dismissing the petitions brought forth by the appellant. It was held that the subject trademark is not similar, let alone deceptively similar, to the Appellant’s Trademark. The Court observed that the appellant’s trademark 
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acts as a source identifier and consists of the words ‘Lawangi Biris’ / Shankar Biri’ along with the byline ‘S R Thakur Poona City’ in English and Hindi, where the packaging has a small imprint saying ‘Shankar Biri’ with a picture of Lord Shankar. In contrast, the impugned mark has ‘No.203 Special Shiv Biri’ in English and Hindi printed on the label, with a picture of the director of the company, Zakir Hussain.
Therefore, since the impugned trademark is visually, structurally and phonetically different from the Appellant’s Trademark, there is no case of deceptive similarity between the marks. Further, the Court held that the elements of the impugned trademark are dissimilar when compared with the appellant’s mark. When judged as a whole, the impugned trademark is unique and distinctive in itself, so it can be identified separately from other trademarks. The artistic representation in the appellant’s mark, being the Lord Shiv image, has absolutely no similarity with the image represented in the impugned trademark. It should also be noted that the word elements of the rival marks are significantly different from each other, so they could not cause any confusion to the general public or members of the trade. When there are no common elements amongst the trademarks, which, when viewed as a whole, are also different from each other, the issue surrounding deceptive similarity does not arise.
It was held that the issues encompassing deceptive similarity, such as the geographical limitation and user claim, do not need to be delved into further as there is no deceptive similarity between the marks. In any case, the geographical limitation was placed for an entirely different mark, not the impugned mark, which should not act as a precedent for the subsequently adopted trademark. The Court dismissed the petition and held that a rectification at the behest of the petitioner of the respondent’s mark could not be allowed.
Authors: Manisha Singh and Malavika Jayakrishnan
First Published by: Mondaq here