Deceptively Similar Trademarks: A Case Analysis of Parle Products v. Future Consumer

The Bombay High Court recently gave directions for interim relief in favour of Parle Products Pvt. Ltd. at the initial hearing of a copyright infringement suit filed by them against Future Consumer Ltd.

Noting that the similarity could not be a co-incidence, the Court effectively restrained Future Consumer from infringing the copyright of Parle Products.

This article explores the basis of this decision and attempts to answer several questions relating to the notion of deceptively similar trademarks under the Trade Marks Act, 1999. Further, the author has traced the evolution of trademark laws in India through various landmark disputes that the courts have had the chance to entertain over the years.

Factual Background

The plaintiff company is involved in the business of manufacture of fast-moving consumer goods (FMCGs), and its flagship biscuit product, “PARLE-G”, had been ranked by a Nielsen Report in 2010-11 as the world’s largest selling biscuit brand.

The company had also been selling biscuits under the following brands – “MONACO”, “KRACKJACK” and “HIDE & SEEK” – for which it had secured the statutory recognition of its trademarks under the Trade Marks Act, 1999. The company had also designed its own distinct packaging for the three brands and over the years, large amounts of money had been spent in order to popularise these products with their respective trademarks and packaging.

However, in the second week of September 2020, the plaintiffs noticed striking similarities between packaging of their products and that of the brands marketed by the defendants, i.e., “CrackO”, “Kracker King” and “Peek-a-Boo”. The plaintiff alleged that the packaging of the defendant’s products had been substantially reproduced from theirs and therefore, it appeared deceptively similar.

The plaintiff submitted before the court that the defendants had copied each and every element of their packaging, including the layout, colour combination, placement and all other distinctive elements to the last millimeter.

Prima Facie Case of Infringement

The Court noted at the outset that prima facie, the copyrights seemed to have been duly acquired by the plaintiffs with respect to the packaging used in their products “MONACO”, “KRACKJACK” and “HIDE & SEEK”. Moreover, these products had also acquired a substantial amount of goodwill and reputation in the market.

The Court proceeded to compare the packaging used in the rival products of the two parties by perusing the following photographs. Finding no doubt about the manner in which the defendant had copied the plaintiffs packaging and that the trade labels were simply reproduced from the plaintiff’s products. The Court stated that it was not possible that the similarities were due to a co-incidence and the defendants must have had the plaintiff’s products before them while designing their trade labels and packaging.

Decision of the Court

Therefore, a strong case was made out by the plaintiffs for the grant of ad-interim reliefs as the plaintiff was likely to suffer irreparable loss in the absence of the same. The balance of convenience was also found to be resting with the plaintiffs. Thus, granting the prayers of the plaintiff, the Court ordered that pending the final disposal of the suit:

a. The defendants, by themselves, their directors, servants, agents, stockiest, dealers, distributors, packagers, manufacturers and all persons acting on their behalf be restrained by an injunction from infringing the plaintiffs’ copyright and using the impugned packaging;

b. The Court Receiver, High Court, Bombay be appointed as the Receiver of defendants’ impugned products bearing the impugned packaging with all powers to enter in the premises of defendants and their directors, servants, agents, dealers, stockiest, manufacturers, packagers and distributors at any time of the day or night, to seize and take charge, possession and control of the same.

Critical Analysis

The Trade Marks Act, 1999 defines infringement of a registered trademark in section 29. The first clause of this provision states that infringement of a registered trademark is said to have taken place when a person, who is not the registered proprietor of the trademark or someone permitted to use the same, uses a mark in the course of his/her trade that is identical or even of a deceptively similar nature to the impugned mark.

The question that arises here is what comes under the ambit of the phrase “deceptively similar” and how the court is to go about in determining the differences and similarities between two marks in use by different persons.

Further, what is the degree of similarity, if any, that can be excused as being permissible for use. Equally to be deliberated is the presence or absence of intention on a case to case basis as to whether the defendant actually intended to deceive unassuming persons into believing that their mark was the same as that of the claimants or not.

Let us consider each of these questions one by one.

An interesting case to gain a preliminary understanding of what has been held to deceptively similar is that of Yahoo!, Inc. v. Akash Arora, wherein the defendant had a domain name ‘Yahoo India!’ which was identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!’.

The court held that internet users would be confused and deceived into believing that both the domain names have the same source. Another interesting decision in this arena was delivered by the Delhi High Court in the case of Retail Royalty Company v. Pantaloons Fashion & Retail Limited.

In this case, the plaintiffs, owners of the clothing brand American Eagle Outfitters, alleged that the mark being used by the defendants, i.e., Urban Eagle Authentic Outfitters, was deceptively similar to their own and amounted to trademark infringement under section 29(1). They also submitted that the defendants’ logo breached copyrights of the plaintiff under section 13 of the Copyrights Act, 1957 as both of their logos portrayed an eagle.

As the defendants were eager to settle, they offered to drop the words “Authentic Outfitters” from their mark and the Court observed that after the removal of the same, there would exist a sufficient distinction between the two marks. Moreover, it was made clear that the plaintiff held trade mark rights over “American Eagle” and could not stop others from using the word “eagle”.

As far as the logos of the two brands were concerned, the court went into the technicalities and noted that while the plaintiff’s logo had an eagle in descent, that of the defendant’s portrayed one in ascent, thus establishing a distinction between the two.

Moreover, the court stated that protection under Section 13 was only meant for artistic works, which was not the case here.

Hence, there is not formula set in stone for determining whether two marks are deceptively similar or not. It is important to note that the courts do not proceed to review the respective trade marks in isolation, but take into consideration the actual brand value and goodwill that a mark carries along with the implications that a potential infringement may have on its reputation. In the case of Cadila Health Care v. Cadila Pharmaceutical Ltd.,

The Supreme Court laid down certain criteria to be taken into account when determining trademark infringement: first, the nature of the marks/labels used; second, the degree of resemblance between the marks/labels; third, the nature of goods for which the marks are used; and fourth, the method of purchasing the goods.

Another fascinating case on the subject of deceptively similar trademarks was one involving the ZARA fashion retail brand and a restaurant going by the name ZARA TAPAS BAR. It was found by the court in this case that while the mark of the restaurant was its full name, they were prominently using only ZARA to refer to the restaurant and hence, it was deceptively similar to the fashion brand’s mark.

Further, the defendant restaurant put forth the contention that since it’s adoption of the mark had been an honest one and had been so used for more than a decade, they should be allowed to become concurrent users of the mark. However, the court observed that the name had been selected by the defendant after a trip to Paris where the plaintiff’s stores are located and that the use of the mark ZARA was a deliberate attempt to ride on the plaintiff’s reputation.

Conclusion

Therefore, the question of what amounts to being “deceptively similar”, along with the process of ascertaining the same, has been explored in this article with particular references to landmark Indian cases.

While there is no concrete jurisprudence on the same, the author suggests that in order to ascertain the role of intention in trade mark infringements, courts must apply a two-fold test of reasonableness: first, to check whether a prudent person would have been capable of presuming that the defendant’s mark was similar to the plaintiff’s; and second, to determine whether the defendant reasonably understood that by using a mark similar to the plaintiff they would obtain undue benefit by taking in the latter’s goodwill.

For the second, the court will also have to look into several factors such as the nature of business, degree of similarity and others.

The injunction granted in favour of Parle Products in the present case was in line with the precedents set in the cases of Laxmikant Patel v. Chetanbhai Shah and Midas Hygiene Industries v. Sudhir Bhatia, where it was reiterated that once it is established that there is deceptive similarity and trademark infringement, the court must proceed to grant injunctions and appoint appropriate persons for the effective implementation of the injunction.

Further, in this case, there is no doubt in the mind of the court that the impugned products of the defendant were in fact deceptively similar to those of the plaintiff and therefore, it is a clear case of trademark infringement under section 29(1).

(The author is a student of law at the Maharashtra National Law University Nagpur)

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