INTRODUCTION TO DECEPTIVE SIMILARITY
Deceptively similar, according of Section 2(1)(h) of the Trade Marks Act, 1999 (herein referred to as “the Act”), has been defined as being so, if one trade mark so nearly resembles another so as to be likely to deceive or cause confusion.
Deceptive similarity becomes, thus, one pertinent ground for claiming trade mark infringement by a registered trade mark owner against the other, since said ground leaves room for the potential exploitation of the goodwill and the reputation of an already existing, well-established firm, by another firm.
It is however salient to note, that such infringement should be done by a firm not being a registered proprietor or a person using by way of permitted use, of the trade mark in relation to goods or services in respect of which the trade mark is registered, as is given in Section 29 of the Act.
This article aims at analysing thus, deceptive similarity, through a case study of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., CS (COMM) 1007/2018, wherein the Hon’ble High Court of Delhi granted the plaintiffs interim relief by way of directing the defendants to alter their trade mark.
FACTS OF THE CASE
- Starbucks Coffee Co., a globally acknowledged and established brand, has had its trade mark “STARBUCKS” and logo “crowned maiden with long hair” registered in India since 2001. What this basically signifies, according to the Indian Intellectual Property laws, more specifically, Section 28 of the Act, is that said registration gives Starbucks, inter alia, the exclusive right to the use of the trade mark in relation to its coffee, beverages and other related products and services with respect to which the trade mark has been registered, and to further obtain relief in respect of infringement of the trade mark in the manner provided by said Act.
- Back in 2015, however, a coffee shop with several outlets opened up in Delhi under the name ‘Sardarbuksh’. Furthermore, the logo of Sardarbuksh had a similar colour scheme and design to that of the registered logo of Starbucks, consisting of a turban and wavy lines.
- Following this, in 2017, Starbucks sent a letter to Sardarbuksh, claiming the infringement of the former’s trade mark, consequent to which, Sardarbuksh modified their logo into one with a different colour scheme of yellow and black, as well as an altered design. But the name of the brand remained the same.
- Subsequently, in 2018, Starbucks filed a suit in the Hon’ble High Court of Delhi, alleging trade mark infringement by Sardarbuksh, claiming deceptive similarity in their trade mark, while the defendant rejected said claims on grounds of the meaning of the term ‘Sardarbuksh’ being different to that of the term ‘Starbucks’.
INTERIM RELIEF GRANTED
Although the final decision in the case has not yet come, the Hon’ble High Court, while relying on precedents such as National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd.[1], observed that a man of ordinary intelligence is likely to be deceived amongst the two names and in an interlocutory order on 27th September, 2018, directed that the defendants would change their name from ‘Sardarbuksh’ to ‘Sardarji-Buksh’ for all their subsequent outlets, while allowing however the use of the old name ‘Sardarbuksh’ for the existing outlets.
ROLE OF A CONSUMER INASCERTAINING DECEPTIVE SIMILARITY
An average consumer, in the eyes of the law, is one with an average intellect and an imperfect recollection. The claim of deceptive similarity being the ground for trade mark infringement, thus requires extreme consideration while deciding if a particular trade mark holds enough authenticity so as to create an image in the minds of the average consumer different than that of another trade mark upon the first glance.
As has been stated in N Dinesh Kumar vs Shweta Khandelwal[2], by the Hon’ble High Court of Karnataka, “In a case of this nature, the main question that arises for consideration is, Whether there is likelihood of confusion arising between the two trademarks, in the mind of a ‘quintessential common man’ who looks at any one of them for a fleeting second and whether he is likely to take it for the other trade mark ? This ‘quintessential common man’ is neither blessed with the wisdom of Solomon nor the trained eyes of Sherlock Holmes.”
Furthermore, as has been observed in National Sewing Thread Co. Ltd. (supra), “28. …Moreover, in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trademark with the goods which he would be purchasing.”
The case of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors, 2018, is one of the many instances wherein deceptive similarity has been held the ground for the infringement of a trade mark and the subsequent exploitation of an established firm’s goodwill, be it have been done intentionally or otherwise.
CONCLUSION
In cessation of the above stated, the present case highlights the essential role of the trade mark laws and the Indian justice system in the protection of both, the registered trade mark owners, against the abuse of their market standing, as well as the average consumer from being deceived and exploited under the pretext of utilization of their trusted brand.
It thus becomes crucial that a brand protects its identity by way of registering its trade mark, given the fact that one is not, under the Act, entitled to institute a suit for the infringement of an unregistered trade mark. These cases are firm reminders that trade mark owners remain vigilant in monitoring potential infringements in order to protect their goodwill and prevent exploitation of their established brand.
[1] National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd., (1953) 1 SCC 794
[2] N Dinesh Kumar vs Shweta Khandelwal, 2021 (2) AKR 471
Author: Ms. Archi Jain, student of Amity University Madhya Pradesh.
