Deceptively similar / similar and nearly resembling marks — Intellectual Property Rights I Notes

Deceptively similar / similar and nearly resembling marks

Is “Falcitab” too close to “Falcigo” when both are malaria drugs? In Cadila (2001) the Supreme Court said yes — and laid down the tests that now decide a whole family of KSLU problems: M-SEAL/SM-SEAL, DON/DAWN, Nirma/Nima. Master these tests and you can answer any “are the marks similar?” question.

What “deceptively similar” means

Definition — s.2(1)(h). A mark is “deceptively similar” to another if it so nearly resembles the other mark as to be likely to deceive or cause confusion. Notice it is not identity that matters — a resemblance close enough to confuse is enough.

The tests of similarity — apply all of them:

Phonetic (sound) similarity — do the marks sound alike when spoken? (Nirma/Nima, DON/DAWN.)
Visual (appearance) similarity — do they look alike in script, layout, colour?
Structural / conceptual similarity — same idea, prefix or structure? (M-SEAL/SM-SEAL.)
The average consumer of imperfect recollection — judge through the eyes of a person of ordinary intelligence and imperfect memory, who does not see the two marks side by side but recalls one when meeting the other.
Nature of goods and class of buyers — for medicines, courts apply a stricter test, because confusion can harm health (Cadila).
Overall / anti-dissection rule — compare the marks as wholes, by their overall impression, not by dissecting them syllable by syllable.

The Cadila factors (2001) for deciding deceptive similarity: (a) nature of the marks; (b) degree of resemblance (phonetic/visual/idea); (c) nature of the goods; (d) class of purchasers, their education and intelligence; (e) mode of purchase; and (f) surrounding circumstances.

Trade Marks Act, 1999, s.2(1)(h): “‘deceptively similar’ — 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.”

In Simple Terms: Two marks are “deceptively similar” if an ordinary buyer with a fuzzy memory might mistake one for the other. Test the sound, the look, the idea and the goods — and be stricter for medicines. You are asking: would a real shopper be confused?

🧩 WORKED EXAMPLE — M-SEAL v SM-SEAL

Facts. The plaintiff holds “M-SEAL”; the defendant begins using “SM-SEAL” for the same sealing product.

Rule. s.2(1)(h) — marks are deceptively similar if they so nearly resemble as to be likely to confuse; apply phonetic, visual and structural tests through the imperfect-recollection consumer.

Apply. “SM-SEAL” shares the dominant element “SEAL” and merely prefixes “S” to “M-SEAL”; phonetically and structurally the marks are close, the goods identical, and a buyer of imperfect recollection would likely be confused.

Decoy. The extra “S” is a trivial difference; small additions do not save a mark that copies the dominant feature.

Conclusion. “SM-SEAL” is deceptively similar to “M-SEAL”; registration/use is liable to be restrained.

flowchart TD
    DS["Deceptively similar? (s.2(1)(h))"]:::root
    DS --> P["Phonetic — do they sound alike?"]:::leaf
    DS --> V["Visual — do they look alike?"]:::leaf
    DS --> S["Structural / idea — same concept?"]:::leaf
    DS --> C["Average consumer, imperfect recollection"]:::leaf
    DS --> M["Stricter test for medicines (Cadila)"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Cadila Health Care v Cadila Pharmaceuticals (2001) — laid down the factors for deceptive similarity and a stricter test for medicinal products (Falcigo/Falcitab).
Amritdhara Pharmacy v Satya Deo Gupta (1963) — “Amritdhara” and “Lakshmandhara” were deceptively similar; judge overall phonetic/visual impression, not by dissection.
Corn Products Refining Co v Shangrila Food Products (1960) — “Glucovita” v “Gluvita”; the test is the overall impression on a buyer of imperfect recollection.

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