An Overview of the Concept of Deceptive Similarity in Trademarks

June 15, 2023

Trademarks are invaluable assets for businesses, serving as identifiers of the source and quality of goods and services. However, in a global marketplace teeming with competition, counterfeiters and infringers are constantly looking for ways to exploit the reputation and success of established brands. One of their tactics is the use of deceptive similarity in trademarks, which poses significant challenges for trademark owners. This article explores the concept of deceptive similarity, its implications, and the measures businesses can take to safeguard their brand names or trademarks.

Understanding Deceptive Similarity

Deceptive similarity refers to the practice of creating trademarks that closely resemble existing, well-known trademarks. These counterfeits are created with the intention of fooling customers into thinking that they are purchasing goods or services from a reputable company when, in reality, this is not the case. This act of deception can lead to uncertainty among customers, a dilution of the originality of the original brand, a loss of sales, and damage to the reputation of the brand that is actually authentic. The use of trademarks that are deceptively designed is done with the intention of confusing the general public and of “free riding” on the reputation of the mark that is being copied.

The Elements of Deceptive Similarity

Several factors contribute to the determination of deceptive similarity between trademarks:

Visual Similarity: The visual aspects of a trademark, including its shape, color, font, and overall design, play a crucial role in establishing deceptive similarity. If an infringing mark closely resembles the original in its visual representation, consumers may easily mistake it for the genuine product.
Phonetic Similarity: The phonetic similarity between trademarks refers to how they sound when spoken aloud. Infringers often create brand names or slogans that mimic the pronunciation of well-known trademarks to exploit consumer confusion.
Conceptual Similarity: This aspect focuses on the overall concept or idea conveyed by the trademark. Even if the visual or phonetic similarities are minimal, if the underlying concept is similar, it can still lead to confusion among consumers.

Take the example of a landmark case Starbucks Corporation v. Sardarbuksh Coffee & Co., Starbucks registered their word mark ‘STARBUCKS’ and associated logo as a trademark in India in 2001. The Defendants started their business in 2015 as ‘Sardarbuksh Coffee & Co.’ Sardarbuksh’s logo included a turban commander’s face with wavy lines on the sides and a circular black ribbon around it. Using the aforementioned instance, the Delhi High Court decided that a man of ordinary intelligence could be confused, and so it is deceptively similar. In this case, the defendant’s logo is visually, phonetically, and conceptually identical to the Plaintiff’s mark. (See image below.)

Legal Implications and Section 11 of the Trademarks Act, 1999

When it comes to trademark law, the issue of deceptive similarity is of the utmost importance since it undermines the fundamental principles of brand protection and consumer trust. The Trademarks Act, 1999, in India, addresses this issue under Section 11. This section prohibits the registration of trademarks that are identical or deceptively similar to existing marks. It states that a mark shall not be registered if it is likely to cause confusion or deceive the public regarding the goods or services it represents.

Section 11 provides a legal basis for brand owners to prevent the registration and use of marks that bear deceptive similarity to their established trademarks. It gives businesses the ability to take legal action and seek remedies against possible infringers, allowing them to protect their brand’s integrity and reputation in the process.

Enforcement and Protection Strategies

To effectively combat deceptive similarity and protect their brands, businesses can adopt several proactive measures:

Trademark Clearance Searches: Before adopting a new trademark, conducting comprehensive searches is crucial. This includes evaluating existing trademarks, pending applications, and common law usage to ensure that the proposed mark is distinct and does not bear deceptive similarity to others.
Vigilant Monitoring: Regularly monitoring the marketplace for any potential infringements is vital. Businesses can employ specialized services, use search engines, monitor e-commerce platforms, and keep an eye on social media to identify and address any instances of deceptive similarity promptly.
Trademark Registration: Registering trademarks provides a legal advantage by creating a public record of ownership. This registration acts as a deterrent against infringers and facilitates legal action if necessary.
Enforcement Actions: If a business identifies a case of deceptive similarity, taking swift legal action against the infringer is crucial. This can involve sending cease-and-desist letters, filing oppositions or cancellations, and pursuing litigation to protect the brand’s integrity.
Brand Awareness and Education: Educating consumers about the existence of counterfeit goods and the risks associated with deceptive similarity is vital. Through targeted campaigns, businesses can raise awareness, reinforce their brand’s distinctive elements, and foster consumer loyalty.

Conclusion

Deceptive similarity poses a significant threat to brand owners, undermining their hard-earned reputation, customer loyalty, and market position. By understanding the elements of deceptive similarity, leveraging the legal framework such as Section 11 of the Trademarks Act, 1999, and implementing robust enforcement and protection strategies, businesses can safeguard their brands and combat the proliferation of counterfeiters.

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What is Trademark Squatting? Insights into the Legal Battle Over Brand Rights

Trademark squatting refers to the practice where individuals or entities register popular brand names, trademarks, or domain names with the aim of making a profit from them. This practice can pose legal difficulties for legitimate brand owners, as opportunists frequently try to sell these assets back to companies at inflated prices, anticipating that the demand for these names will result in a substantial profit. This issue may not be new, but the evolving digital landscape and the growing significance of online branding have amplified its effects. Understanding Trademark Squatting Trademark squatting involves the unauthorised registration or use of a trademark that closely resembles a well-known brand or business name, with the aim of capitalising on the brand’s reputation. This practice typically takes place in two areas: Trademark Squatting Under Indian Law The Trademarks Act, 1999 regulates trademark matters in India. While it doesn’t directly mention “trademark squatting,” it sets up the legal structure for safeguarding registered trademarks. Indian law provides two primary legal remedies to address the issue of squatting: 1. Trademark Infringement: When a squatter utilises a registered trademark, the legitimate owner has the option to initiate a lawsuit alleging trademark infringement. Courts evaluate aspects such as similarity, the purpose of registration, and any damage inflicted on the original brand. 2. Passing Off: When a brand owner has not registered their trademark, they may pursue a claim of passing off, which is a remedy recognised by common law. The brand owner must show their goodwill and establish that the squatter’s use of the brand leads to confusion for consumers. Furthermore, in situations concerning domain names, India’s .IN Dispute Resolution Policy (INDRP) directly deals with disputes related to .IN domain names, whereas international cases involving generic domains typically come under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Trademark Squatting and Cybersquatting Trademark squatting and cybersquatting are interconnected concepts, yet they vary in their extent. Trademark squatting involves the misuse of trademarks across various market segments, whereas cybersquatting is focused specifically on internet domain names. Both, however, seek to gain from unauthorised registration, often expecting that the rightful brand owner will repurchase the asset to prevent possible confusion among consumers. Recent Judgment on Trademark Squatting In a recent case involving the domain name JioHotstar.com, the registrant claimed they purchased the domain thinking that Jio (the telecom brand owned by Reliance Industries) and Disney+ Hotstar were likely to come together, based on speculation in various industry circles. They even registered this domain name, assuming that if Jio and Disney merged, Jio could brand it as JioHotstar. The registrant confessed that the aim was to sell the domain to Reliance, stating, “It was a money-making venture to pay for education at Cambridge.” The above explanation notwithstanding, the nature of this cybersquatting case was so textbook (cybersquatting being a specific type of trademark squatting, where instead of a traditional trademark, the focus is on the domain name) that the legal outcome was predictable. In recent years, the judgment of courts globally, including in India, has increasingly emphasized intent in matters related to trademark and cybersquatting disputes. In this case, the registrant’s objective was clearly to profit from a potential merger by flipping the domain back to the brand itself—a motive devoid of any legitimate business interest. This leans towards bad-faith registration, a significant factor that courts examine in cybersquatting cases. In this instance, because JioHotstar.com was not intended to host a legitimate business or service but to be resold for profit, it was categorized as bad faith under section 4(b)(ii) of the policy. Courts generally view such intentions negatively, and if the legitimate brand owner challenges the domain, the domain owner is likely to face difficulty defending their position. The example of *JioHotstar.com* highlights the need for courts to take a firm stand: domains registered with the intent of exploiting brand equity should be invalidated, even if the challenge by the trademark owner is based on their interests. Strategies to Prevent and Address Trademark Squatting Brands can implement proactive measures to steer clear of the difficulties associated with squatting: Conclusion Trademark squatting remains a significant legal challenge for global brands, impacting brand integrity in both online and offline environments. With courts increasingly focused on protecting the rights of trademark owners, cases like JioHotstar.com illustrate how the legal framework discourages attempts to exploit recognised brands for personal gain. Companies can protect their brand and prevent squatters from taking advantage of their intellectual property by actively registering trademarks and monitoring domain names.

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Food Plating and Copyright Protection in India

Food plating — the positioning and presentation of food on a plate has matured into its own craft; showcasing chefs around the globe serving up more than just taste alone. In addition to aesthetics, it sets up your dining experience and reflect the brand identity of a restaurant. Chefs and restaurateurs have resorted to intellectual property (IP) law in different countries around the world, for protecting their unique forms of plating. But in India, copyright law does not allow for food plating to be protected easily: the same is because of two key reasons; firstly, food being highly perishable items and secondly primary purpose of using dishes as they serve a functional role. This article takes a closer look at the intersection of Indian copyright law and food plating, covering eligibility requirements and mechanisms for protection as well as some significant challenges. Copyright Eligibility for Food Plating in India Under the Copyright Act of 1957, copyright protection in India applies to original works of art, literature, music, and more. For a work to be eligible, it generally must meet two main requirements: However, Indian Copyright Law does not automatically deem the plating of food copyrightable. Chefs have no immediate legal protection for their plating, but by photographing it they can at least preserve the creative arrangement in a fixed medium. This approach means the copyright is granted to the photograph or video itself—not the plated arrangement—which still presents some limitations but can deter unauthorized reproduction of the image. Protecting Food Plating in India: Alternative Approaches Despite the challenges, several IP options could provide indirect protection for food plating in India: Key Challenges in Achieving Copyright Protection for Food Plating Even with these alternatives, protecting food plating remains challenging in India for several reasons: Practical Recommendations for Chefs and Restaurateurs For chefs and restaurant owners in India interested in protecting their food plating styles, here are some practical steps that can help: Conclusion Food presentation does not enjoy copyright protection in India, as food is transient (disappearing after a meal), functional, and perishable. Although food plating does not fall under the traditional copyright regime, chefs or restaurateurs can explore other methods—such as photographic copyright, branding protections, contractual protections, and trade dress—to safeguard their culinary creations’ presentation. While these solutions provide some level of protection, they ultimately highlight the issue that, in the Indian legal context, food plating lacks force under copyright law. If chefs hope to protect their plating artistry in India, the key is to focus on brand-building and be inventive with alternative IP protections.

November 11, 2024 No Comments

The principle of ‘Continuous Use’ in Trademark Law

While talking about Trademark law regime, the principle of ‘continuous use’ plays a crucial role in shaping the validity and enforceability of trademark rights. In India, similar to many other jurisdictions, one of the most known ways to establish the exclusive rights over a trademark is through continuous and consistent usage of the mark in commerce or in course of trade. Even if the formal registration is not granted, a trademark can still be protected based on its consistent use in the market. This article explores the principle of continuous use under Indian trademark law, its significance, and how it impacts the protection and enforcement of trademarks. What is the Principle of Continuous Use? The principle of continuous use in trademark law refers to the long and consistent use of a trademark by its owner in the course of trade in business. The continuous and uninterrupted use of the trademark assists in establishing the goodwill and reputation of the brand in the market. The older a trademark, the greater its reputation and goodwill. The Trademarks Act, 1999, acknowledges the importance of continuous use by offering protection to both registered and unregistered trademarks. The primary aim of this principle is to ensure that the rights over a trademark belong to the entity that has genuinely used the mark in commerce over time. The Legal Foundation of Continuous Use in India According to Indian trademark law, Section 34 of the Trademarks Act, 1999, addresses the principle of continuous use, highlighting the concept of “prior use.” This section states that a registered trademark owner cannot prevent any individual or business from continuing to use a mark if they have been using it consistently since before the trademark was registered. This provision is crucial as it emphasises use rather than registration. This means that even if a third party registers a trademark, the party that has been using the mark continuously for the longest time holds superior rights to it. Key Points of Section 34: Importance of Continuous Use 1. Establishing Priority Continuous use plays a crucial role in establishing priority over a trademark. If there is a conflict in rights, the trademark used earlier and without interruption has better rights to claim its use over that of the owner if it contrasts with the registered trademark holder. This is especially relevant in India, where the “first-to-use” principle precedes the common law concept of a “First-to-file”. 2. Preventing Abandonment This continuous use will prevent the trademark from being deemed abandoned. Failure to use a trademark without proper reason over an extended period may lead the authorities to declare it abandoned, and as such lose its rights. According to Indian trademark law, a mark needs to be used continuously in trade so as to retain its enforceability. Failure to do so can open the door for third parties to challenge the ownership of the trademark. 3. Reputation and Goodwill The longer you use a trademark, the more related goodwill and recognition will be gained that are important elements for every brand. A business expands sufficient identity allowing consumers to relate the brand with quality, trustworthiness or in a specific product or service. A trademark that has been used continuously over time under Indian law may qualify as a “well-known trademark” and receive additional protection, even in categories where it is not even directly used. 4. Protection for Unregistered Trademarks In the case of unregistered trademarks, continuous use is especially important. While unregistered marks are not protected under the Indian Trademarks Act, they may still be safeguarded by utilizing English common law rights called “passing off.” In as action of passing off, long time use would help the plaintiff establish that their mark has gathered good will and that the defendant’s use of a similar mark would likely deceive consumers and cause harm to their business. Proving Continuous Use Having continuous use and proving the same are two different things. Mentioned below are the kinds of documents that can be furnished in order to prove the continuous use of a particular trademark: Challenges to Continuous Use While continuous use is a strong principle in Indian trademark law, it does come with certain challenges: Relevant Case Laws The Supreme Court made clear that the rights of prior users are stronger than trademark registration. So just because a trademark is registered does not mean the original user of that domain cannot infringe on your rights. The court decided in Peps’ favour, indicating that a mark can still receive protection even if it is descriptive, provided it has acquired distinctiveness through ongoing use. Conclusion The principle of continuous use serves as a fundamental aspect of trademark law in India, offering protection to businesses that have consistently used their trademarks over the years, regardless of registration status. It ensures that the true owner of a trademark is the one who has consistently utilised it in commerce, rather than simply the one who registered it first. Indian trademark law seeks to promote fairness and preserve the goodwill that businesses build around their brands by emphasising use rather than formal registration. It is essential for both businesses and individuals to consistently use their trademarks in order to protect their rights and avoid potential legal conflicts.

October 28, 2024 No Comments

Work for Hire in the IP World: Copyright and Patents

When it comes to the creation of Intellectual property the concept of “work for hire” plays a pivotal role, especially in the domains of copyright and patent law. This legal principle determines who holds the ownership of intellectual property created in the course of employment or under a contractual agreement. While the idea of “work for hire” may seem straightforward, its implications can be complex and vary significantly between different types of IP, such as copyrights and patents. This article explores the concept of “work for hire” in the context of Indian law and how it affects ownership and rights related to copyright and patents. What is “Work for Hire”? The concept of “work for hire” refers to a situation where a person or entity, typically an employer or contractor, hires an individual (an employee or an independent contractor) to create a specific piece of intellectual property, and as a result, the ownership of the work is automatically assigned to the hiring party. In the Indian IP context, work for hire influences two major areas: 1. Copyrights (for creative works like writings, music, films, software, etc.) 2. Patents (for inventions and innovations). The way “work for hire” operates under Indian law differs slightly in each of these categories, and understanding these distinctions is crucial for creators, employers, and businesses alike. Work for Hire in Indian Copyright Law Legal Framework In India, copyright is governed by the Copyright Act, 1957. Under this Act, the principle of “work for hire” is enshrined in Section 17, which deals with the ownership of copyright. Generally, the author or creator of a work is the first owner of the copyright. However, there are exceptions to this rule, one of the most significant being works created under employment or commission, which are considered “works for hire.” Ownership of Copyright According to Section 17 of the Copyright Act, the employer or commissioning party will be the first owner of the copyright in the following cases: 1. In the Course of Employment: If a work is created by an employee in the course of their employment, the employer is deemed the first owner of the copyright, unless there is an agreement to the contrary. 2. Commissioned Work: If a work is created on commission for a specific purpose, the party commissioning the work will own the copyright unless there is an agreement to the contrary. In the case Khemraj Shrikrishnadass v. M/s Garg & Co., the court addressed the issue of copyright ownership concerning work for hire under Indian law. The court held that in the absence of a contract stating otherwise, when an author creates a work at the request of another party for remuneration, the copyright typically passes to the person who commissioned the work. This reinforces the general principle that unless an explicit contract exists, the employer or commissioner becomes the first owner of the copyright in such works created during employment or as commissioned assignments. Moral Rights Even though the employer or commissioning party owns the copyright, the creator still retains moral rights under Indian law, including the right to claim authorship and prevent modifications that could harm the creator’s reputation. Work for Hire in Indian Patent Law Legal Framework In India, patent rights are governed by the Patents Act, 1970. Unlike copyright, where the work-for-hire principle is relatively clear, patent law presents a more nuanced situation. Ownership of a patent typically depends on the terms of employment and whether the invention was created within the scope of the inventor’s duties. Ownership of Patents There is no automatic “work for hire” rule for patents in India as there is in copyright law. Instead, the inventor is considered the “first owner” of the patent and the ownership of inventions depends on the terms of the employment contract or a specific assignment agreement. This means that while an employee is the actual inventor, ownership of the patent can only be transferred to the employer through a written contract or agreement. Furthermore, there is always a separate debate about the inventions created by the employee during the course of employment and since the inventor (employee in this case) is the first owner of the patents the Employers are advised to always execute a assignment agreement in place. 1. In the Course of Employment: If an employee invents something as part of their job duties (e.g., researchers, engineers), the employer generally owns the patent subject to the assignment agreement. 2. Outside Employment Duties: If an employee invents something unrelated to their job description and outside the use of company resources, the employee may have the right to the patent. The case of Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd. (2014) revolves around a dispute concerning intellectual property rights in the context of patent law and “work for hire.” The case involved the question of whether the inventions and patents developed by Kavasmaneck, a key employee of Gharda Chemicals, belonged to him individually or to the company. The court ruled in favor of Gharda Chemicals, affirming that the inventions created by Kavasmaneck during his tenure with the company fell under the “work for hire” doctrine, as they were made in the course of his employment and used the company’s resources. This case highlights the importance of employment agreements and the principle that inventions made by employees in the scope of their work duties are typically owned by the employer Comparing Copyright and Patent Work for Hire While the concept of work for hire is prevalent in both copyright and patent law, there are some key differences: 1. Automatic Ownership: – In copyright, the employer or commissioner is typically the automatic owner unless there is an agreement to the contrary. – In patent law, ownership depends on the employment context and the existence of a clear agreement, as the inventor is the first and original owner by default. 2. Scope of Work: – In copyright, almost any work created within the course of employment may fall under work