Imagine a triangle consisting of a producer, a good or service and a consumer. At the centroid, lies a trademark which tells the consumer where the good originated from and consequently indicates the quality associated with it. A trademark allows minimization of consumer’s confusion and maximizes informational efficiency in the market. There is quite some debate on how (and when)[i] the legal protection of trademarks began historically, however throughout the evolving jurisprudence, one thing has stood clear: A trademark proprietor shall possess the right in rem to exclude others from using identical or deceptively similar name, logo or any other distinguishing characteristic. To that extent, the Courts across all jurisdictions have created bright-line rules and parameters to decide the similarity of marks. In India, the Supreme Court in one passing-off case[ii] laid down seven parameters to be considered for deciding if marks are deceptively similar: • Nature of marks • Degree of visual, structural and phonetic similarity between the marks • Nature of goods • Similarity in nature, character and performance of the goods • The potential class of purchasers and their intelligence • Mode of purchase and channel through which the goods enter the market and • Other surrounding circumstances that may be relevant.
However, the application of these parameters has been notoriously subjective and non-uniform in the Courts. However, on account of multitude of facts which may be relevant, quantified degrees of reliance can’t be placed on one factor over the other. To quote a noted practitioner, “The only “rule” in likelihood of confusion cases is that no rule is meaningful unless it is applied to the facts for the purpose of understanding the consumer’s expectations, perceptions, and memory of the trademarks at issue. Without constant reference to this psychology, all the talk to follow of multi-factor tests, “dominant portions,” product relatedness, channels of trade, etc., is unhelpful.”[iii]
Phonetic Similarity and its application in the Imagine Marketing case
In India, one factor i.e., the “phonetic similarity” of the marks has turned predominant over the rest (quite similar to how the “transformative use” factor in fair use holds pre-eminence[iv] amongst the four factors in US copyright law). The Supreme Court of India has held that “the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different.”[v]Clearly, visual differences in the mark are side-lined and phonetic similarity is given higher weightage in determining infringement of trademarks. To strengthen my claim, another Supreme Court judgement while adjudicating the similarity between the marks ‘AMBAL’ and ‘ANDAL’, explicitly said “There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.”[vi]
Inherently, this is a feature (and not a flaw) of the trademark regime. People develop biases to certain sounds when they hear it for an extended period of time. This creates an expectation in the mind to hear the identical word in the future again. So, when a similar word is heard, people perceive it as the word they expected to hear and not the similar-sounding word which was actually said. For instance, if I utter ‘GIBTONE’ (an actual counterfeit product in India), a musician is quite likely to perceive it as ‘GIBSON’ (a popular guitar brand).
Earlier this year, a judgement from the Delhi High Court held that the mark ‘BOULT’ is similar to ‘BOAT’.[vii] Both of them are audio companies which primarily sell earphones and headphones. Several facts did lead to the Court granting an injunction against ‘BOULT’. However, focussing on the phonetic similarity fragment, the Court reasoned that:“The similarity between the two marks has not to be adjudicated by way of a precision but the manner in which the senses perceive a fact and retain it in the memory. BOAT and BOULT being quite phonetically similar, a consumer would not have a correct complete and reflection when he goes to buy the product whether the product is of BOAT or BOULT because of the first two and the last alphabet of the two words being the same.”[viii]
In this case, the Court placed reliance on the alphabets present in the two words and held them similar. Strangely, the stark difference in the pronunciation of the words is unaccounted for. The same Court in a different case where the marks involved in the dispute were ‘ZEGNA’ and ‘JENYA’, held that they were similar because ‘ZEGNA’ was ought to be pronounced as ‘ZEN-YAH’.[ix] I believe that the marks ‘BOAT’ and ‘BOULT’ are phonetically dissimilar. I am tempted to contend that the buyers of such goods even though the Court said it to be: “all strata of the society including children as well”, such goods are usually purchased through the digital media where buyers are usually more vigilant and knowledgeable. In the headphones (and all of electronics) market, a buyer is quite likely to extensively peruse a wide variety of product reviews, product specification comparisons, ‘Top 10 lists in X budget’ etc. before finalizing the purchase. It is highly unlikely that an average buyer in today’s age would get confused. Then why did the Court find the marks to be similar?
Perhaps, the answer lies in the precedents set in the Indian trademark law. Around six decades ago, the apex court found that the marks ‘AMRITDHARA’ and ‘LAKSHMANDHARA’ were phonetically similar. The Court reasoned that “Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and, see the difference between ‘current of nectar’ and ‘current of Lakshman’.”[x] The class of purchasers in this case is not the same as the rest. An Indian man of ‘average intelligence and imperfect recollection’ (the analogous counterpart of ‘reasonable man’ in tort law or ‘person skilled in the art’ in patent law) today would not be confused by the sound of ‘AMRITDHARA’ and ‘LASKHMANDHARA’. However, this case is quoted till date in most cases and chance of a mark to resemble another is stretched far more than necessary.
In the same breath, a Bombay High Court ruling which involved the marks ‘ANCHOR’ and ‘ENCORE’, found them to be phonetically similar. Justice D.Y. Chandrachud emphatically reasoned as follows (with heavy emphasis):
“The manner in which the ‘a’ as in ‘anchor’ is pronounced by an Englishman on Notting Hill may well appear to a discerning traveller to be distinct from a Frenchman’s pronunciation of the ‘e’ in ‘encore’ on a fashionable by lane near Champs Elysees. That is no defence to an action in our Courts for passing off: For the ordinary consumer in Ahmedabad and her counterpart in Mumbai’s shopping streets, the ‘a’ in ‘anchor’ and the ‘e’ in ‘encore’ are perilously and deceptively similar. The Court must assess the makeup of an Indian consumer and, associated with that, the cultural traits that underlie the spelling and pronunciation of words. The case of the Plaintiff is that in Gujarati as well as in Hindi, there is not even a subtle distinction between the manner in which ‘Anchor’ and ‘Encore’ would be pronounced and we find merit in the submission. The overall impact in terms of phonetical usage is one of striking similarity.”[xi]
In India, we speak several languages (and each language may have more than one dialect). Businesses who adopt marks are generally in English and no trademark search can assure if a particular mark even if distinct in English would be phonetically dissimilar in native languages. That puts some businesses at a disadvantage. And the degree of protection a registered mark attains is far wider due to the fact that pronunciations and consumer perceptions in native languages would also be taken into account. Furthermore, if two marks in Bangla are perceived as phonetically different by Bengali speakers, there lies a possibility of confusion amongst non-Bengali speakers.
In contradistinction, courts in US or UK do not usually face such challenges as only English is primarily spoken throughout the length and breadth of the country. The Indian Courts have never addressed the challenge faced in a multi-lingual consumer base who have varied levels of education and perceptions as well.
The Way Ahead
Perhaps, a lot of the problem can be solved if the Court instead of guesswork or placing reliance on Jurassic era cases, lay emphasis on the ‘actual’ confusion caused by the marks. The US Courts have allowed use of scientific surveys and it has gained widespread acceptance within the federal court system. Surveys are regularly used in assessment of confusion between marks.[xii] Indian courts should evolve and accept submission of such evidences. Furthermore, surveys can perhaps more accurately determine who exactly constitute the class of purchasers of the goods. Through this process, businesses can stop looking over their shoulders, in fear of a trademark litigation.
[i]See, Lionel Bently, The First Trademark Case at Common Law? The Story of Singleton v. Bolton (1783), U.C. Davis Law Review, Vol. 47 Issue 3.
[ii]Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (JT 2001 (4) SC 243).
[iii]See, Richard L. Kirkpatrick, Likelihood of Confusion in Trademark Law (Practising Law Institute); 1st Edition (1995).
[iv]See, Jiarui Liu, An Empirical Study of Transformative Use in Copyright Law, 22 STAN. TECH. L. REV. 163 (2019).
[v]Supra at Note 1.
[vi]K. R. Chinna Krishna Chettiar v. Sri Ambal& Co., Madras &Anr., 1970 SCR (1) 290.
[vii]S Imagine Marketing Pvt. Ltd. v. Exotic Mile, CS(COMM) 519/2019.
[viii]Ibid at para. 21.
[ix]Consitex S.A. v. Kamini Jain &Ors., (2011) 47 PTC 337 (Delhi).
[x]Amritdhara Pharmacy v. Satyadeo Gupta, 1963 AIR 449.
[xi]Encore Electronics Ltd. Vs. AnchorElectronics and Electricals Pvt. Ltd., F 2007 (35) PTC 714 (Bom.).
[xii]See, James T. Berger, R. Mark Halligan, Trademark Surveys: A Litigator’s Guide (LexisNexis); 1st Edition (2015).