India: Confusion Among Confusions

'Confusion' word in literal sense means "to fail to distinguish between, to perplex or bewilder" and in common language it means 'a state of mind where a person unable to choose between options'. In Trade Marks Law confusion plays an important part in being a mark distinctive or non-distinctive. The word confusion has been used in both grounds of refusal i.e. in 'absolute' as well as 'relative' but both confusions are different from each other. The understanding of both confusions is very much important in seeking registration of a trademark.

The deception or confusion might arise by reason of similarity between the proposed mark and another existing mark or might flow from something contained in the mark propounded for registration or might result from the nature of the use of the mark¹.

Section 9(2)(a) of the Trade Marks Act, 1999 is related to second kind of confusion, it says:

Section 9(2)(a) is primarily concerned with the deceptive nature of the mark by the reason of something inherent in the mark or its use, such as to nature, quality or geographical origin of the goods or services. The mark may be in nature of misrepresentation as to the characteristics of the goods or services or to the effect that they were made in a specified geographical region or place, when in fact not so made. Deceptive use is also involved where the mark contain false or misleading matter (such as the of word "regd" when the mark is not registered) or marks which are used in fraudulent trade.

If the Registrar is convinced that the mark propounded for registration is of such nature that the public may be deceived or there will be confusion among the purchasing public and the trade or profession, he may not register it. However this deception and/or confusion may either be visual or phonetic.

In case of National Sewing Thread Co. Ltd v. James Chadwick & Bros. Ltd² Hon'ble Supreme Court observed that the burden of proving that the trademark concerned is not likely to deceive or to cause confusion, is upon the applicant. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trademark, what association he would form by looking at that trademark, and in what respect he would connect the trade mark with the goods which he would be purchasing.

Confusion under section 9(2) (a) can easily be understood as it is the confusion when something which is present in the mark itself and does not have any relation to any other mark. For example if a mark contains a description like 'pure ghee' and mark is applied for edible oil then it will be refused on the ground of deception or confusion under the current section.

In case of Leather Cloth Co. Ltd. V. American Leather Cloth Co. Ltd³ the plaintiffs had stamped upon all their goods the words 'tanned leather cloth' whether such goods are tanned or untanned. They had made only about one-tenth of their whole produced in tanned cloth. It was held by the House of Lords that the plaintiffs were disentitled to relief in the ground inter alia that they had made a material misrepresentation about the nature of the goods.

Registration will be refused where the trade mark contains a false or misleading matter with respect to the applicant's goods such as to amount to a fraud upon the public. What would constitute a misrepresentation of this description will depend upon the facts of the case and may in a particular case to be a reasonable subject of doubt. The general rule is that the misstatement of any material fact calculated to deceive the public, will be sufficient for this purpose. Under this section the general public interest will be in danger and the Registrar has to make sure that the public interest should be safe.

The deception or confusion envisaged in Section 9(2) (a) flows out of something contained in the mark itself sought to be registered and not out of resemblance with any other mark. The question related to resemblance arises under Section 11(1).

Section 11(1) says that:

The confusion envisaged under section 11(1) is for the interest of the public at large in reference to the similar marks. Section 9(2) (a) talks about the confusion flowing from the mark itself whereas the confusion under section 11(1) is in connection to any other mark. This type of confusion can lead a person to believe the association between the prior registered/pending marks with the mark applied afterwards.

The test for assessing the likelihood of confusion or deception is laid down as follows in the classic Evershed formula in Smith Hayden's Application⁴:

"Assuming user by the opponent of his registered trade mark in a normal and fair manner for any of the goods covered by the registration of the mark (and including particularly goods also covered by the proposed registration of the mark), is the court satisfied that there will be no reasonable likelihood of deception or confusion amongst a substantial number of persons if the applicant also uses his mark applied for normally and fairly in respect of any goods covered by their proposed registration".

Hon'ble Supreme Court held in case of Amritdhara Pharmacy v Satya Dev Gupta ⁵ that:

1. A trade mark is likely to deceive or cause confusion by its resemblance to another mark if it is likely to do so in the course of its legitimate use in a market the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered.
2. For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confusion, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion it is perhaps an appropriate description of the state of mind of a customer, who, on seeing the mark, thinks that it differ from the mark on goods which he had previously bought, but is doubtful whether that impression is not due to imperfect recollection.
3. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection who would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. He would consider the word as a whole without splitting the name into its component parts and not going to its etymological meaning.

Section 11(1) uses the expression "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark." In this context the European Court of Justice laid down that the likelihood of the association may arise in three set of circumstances:

1. Where the public confuses the sign and the mark in question (likelihood of direct confusion);
2. Where the public makes a connection between the proprietor of the sign and those of the mark and confuses them (likelihood of indirect confusion or association);
3. Where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memorable mark, although the two are not confused (likelihood of association in the strict sense).

So based on the above it can be said that, though the word 'confusion' is used in absolute as well as relative ground of refusal but the ambit of both confusions are different from one another and confusion of the one provision cannot replace the confusion of the other.

CONCLUSION

Although it is dependent upon the nature of the mark whether it will be registered or not but the idea which it leads to will play a very important role in deciding whether it will create confusion or not. If the mark will lead to confusion among the customers whether related to the similarity or nature then it can be refused hence it should be kept in mind while deciding about the mark to be used in future that it should pass both tests of confusion. Trademark being the most important identity of a business hence it should be free from any characteristics which will lead it to create confusion in the market.

Footnotes

1. Bass Ratcliff & Gretton Ltd v. Nicholson & Sons Ltd., (1932) 49 RPC 88, p.107

2. AIR 1953 SC 357(PARA 22)

3. (1863) 4 De G. J. & S 137

4. (1946) 63 RPC 97, p.101

5. AIR1963 SC 449

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.