Deceptive Similarity: What the Act Means

In one line

Two marks are deceptively similar when one so nearly resembles the other that people are likely to be deceived or confused, and deception and confusion are two different things.

In the wording a student can write in an exam: section 2(1)(h) provides that "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".

The three words in MU's heading

"Similar", "nearly resembling" and "deceptively similar" are not synonyms, and separating them is the first mark in an answer on this topic.

Similar is the Act's word in section 11(1) and section 29(2), where the question is a likelihood of confusion on the part of the public. Similarity is a relation between two signs; whether it matters depends on the goods and the public.

Nearly resembling is the phrase inside the definition of deceptive similarity, and it also appears in section 16(1) on associated marks, in section 28(3) on two registrations, and in section 34 on prior use. It describes the closeness of the two signs.

Deceptively similar is the compound idea: near resemblance plus the likelihood of deception or confusion. It is a defined term, and it appears in section 29(1).

So the definition has two limbs, and both must be satisfied. Near resemblance is not enough; the resemblance must be such as to make deception or confusion likely.

Deception and confusion

They are two ideas, and the difference decides cases.

Deception is a positive belief that the defendant's goods are the plaintiff's. The buyer is misled about who made them.

Confusion is a state of doubt or wondering. The buyer does not necessarily believe the goods are the plaintiff's; he is left uncertain whether they are, or assumes some connection.

Confusion is therefore the wider idea, and a plaintiff who cannot prove that anybody was deceived may still succeed on confusion. Section 11(1) makes the point in terms by adding that likelihood of confusion includes the likelihood of association with the earlier mark.

The four features of the statutory test

One: it is a LIKELIHOOD, not a certainty and not a fact. The words are "likely to deceive or cause confusion". Actual confusion need not be proved, though evidence of it is powerful when it exists.

Two: intention is irrelevant to the test. The Supreme Court said so directly in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., AIR 1970 SC 2062.

Facts. The appellant's mark PROTOVIT was registered in 1946 for a vitamin preparation; the respondent registered DROPOVIT in 1957 for medical and pharmaceutical preparations; the appellant applied to rectify the register.