Resemblance and Proximity: The Evidence for Deceptive Similarity and Confusion

Resemblance and Proximity: The Evidence for Deceptive Similarity and ConfusionThe Delhi High Court recently decided on a petition to cancel a trademark due to alleged phonetic similarities and overlapping business areas. The Court, in their determination, focused on how consumers would perceive the similarity between the marks, noting that consumers tend to notice similarities more than differences.

Facts of the Case

The Petitioner, Punam Flutes, the registered proprietor of PUNAM FLUTES /  filed a cancellation petition against Mahesh Chand Gupta for filing PUNAM under Class 15 for musical instruments. The Petitioner stated that they had been carrying out their business since 2004 and adopted the mark in 2018 by filing for applications in Class 15, 42 and 45, apart from having filed applications for POONAM, PUNAM, PUNAM FLUTES, and. They also have a copyright registration for under No. A-132023/2019.

The Petitioner argued that the (i) Respondent’s mark had not been used since the date of registration on November 21, 2019, (ii) the mark was deceptively similar to their own, and (iii) the mark was being used for similar goods, thereby increasing the possibility of confusion. The Petitioner provided evidence showing their sales began before the respondent’s, arguing that the respondent’s mark should be cancelled under Section 57 of the Trademarks Act, 1999.

Decision of the Court

The Court compared the marks and held that the prominent part of the Petitioner’s mark was PUNAM, while the word FLUTES and the pictorial representation were merely descriptive. This meant that the Petitioner intended for the masses to identify their products with PUNAM as the source identifier. The Court observed that the Respondent’s mark included the whole of the Petitioner’s mark and covered similar goods.

Considering the prior use of the petitioner’s mark, the likelihood of consumers focusing on overall similarities rather than details, and the identical nature of the goods, the Court concluded that the respondent’s mark “PUNAM” was likely to cause confusion. The Court held that the striking feature of the Petitioner’s mark was PUNAM and that the usage of PUNAM in identical or similar goods by the Respondent, which the Court succinctly termed as resemblance and proximity, meant that the Respondent’s registration was liable to be cancelled.

Authors: Manisha Singh and Tushitta Murali

First Published by: Lexology here