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Article: Whether the Test of Similarity is Altered for Abbreviation Marks?
Author: Intern - Yash Raj
Introduction
Abbreviation basically means a shortened form of a word or phrase. Use of abbreviations as a trademark has become a common practice nowadays for better brand recognition and retention in the minds of a modern consumer. The Trade Marks Act, 1999 (“Act”) under section 2(1)(m) provides that “‘mark’ includes a…word, letter, numeral,… or any combination thereof”. Therefore, abbreviations can be considered as marks under the Act. However, the test of similarity for abbreviation marks would need to be adapted as even change in a single letter can have a huge effect on the likelihood of confusion between the marks.
Test of Deceptive Similarity
Section 2(1)(h) of the Act provides that a mark shall be deemed to be “‘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 order to come to the conclusion whether one mark is deceptively similar to another under Section 29 of the Act, it has been held that the broad and essential features of the two are to be considered and an overall similarity leading to the likelihood of confusion is enough. [Parle Products Pvt. Ltd. v. J.P. and Co., (1972) 1 SCC 618] [1].
Abbreviation Marks and Deceptive Similarity
The concept of deceptive similarity as envisioned under Section 2(1)(h) of the Act provides a broad criterion and courts need to interpret the scope of the provision according to the nature of the mark involved so as to appropriately determine the likelihood of confusion. The Courts in India have on several instances dealt with the test of deceptive similarity for abbreviation marks and have enunciated the law on the point. In International Student Identity Card Association v. Abhishek Tiwari [2017 (71) PTC 554 (Del)] [2], it was held that while analyzing deceptive similarity for abbreviation marks under section 2(1)(h) of the Act, there should be a test of phonetic similarly between the two acronyms along with uniqueness or distinctiveness in the abbreviation forming the generic description of the product.
The Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. [AIR 2002 SC 117] [3] had elucidated further on the test of deceptive similarity as provided under Section 2(1)(h) of the Act that the question whether there is any likelihood or deception or confusion must be considered in the context of various factors including nature of the market itself, the class of customers, the extent of reputation, the trade channels, the existence of any connection in course of trade, and others. For example, while considering whether MRF would be similar to TRF in identical goods/services, it has to be seen not only in context of the difference in the syllables but also in light of the other surrounding factors like class of consumers, goodwill, etc.
An Altered Approach
The overall similarity approach as used generally for the test of similarity could lead to catastrophic results if other surrounding circumstances as discussed above are not meaningfully taken into consideration. With the same aspect in mind, the High Court of Delhi in the case of CFA Institute v. Brickwork Finance Academy [2020 (84) PTC 12 (Del)] [4] applied the test of deceptive similarity for marks CFA and BFA with an altered approach. The Court, while pondering upon the question of whether there was a likelihood of confusion or deception arising from similarity of marks, came to the conclusion that since the first syllable/alphabet is different/dissimilar, the marks are visually and phonetically dissimilar. The Court then moved on to consider the aspect of the class of purchasers, the mode of purchase and other surrounding circumstances and held that the class of customers who are likely to avail or pursue the courses of either the plaintiff or the defendant will be capable of differentiating between the two programs before enrolling for their preferred course. In this case, while considering the similarity between the marks, the court appropriately concluded, that that there is no likelihood of the two marks being confused as such, by taking into consideration not only the difference in syllable/alphabet but also other factors which are of utmost significance in abbreviation marks.
Conclusion
The test of difference in syllable/alphabet making the marks different/dissimilar as applied by Courts establishes that the test of similarity although overall quite similar but nevertheless should be approached with a slightly altered sense in case of abbreviation marks. The conclusion that can be derived is that with regard to abbreviation trade marks, even a different first letter can make the trademark as such dissimilar, however, the same shall also be dependent on several other factors as provided in the various judicial pronouncements on the subject. The author believes that there must be extra vigilance with regard to abbreviation marks as likelihood of confusion could vary tremendously even with minor modifications.
Endnotes
[1] Parle Products Pvt. Ltd. v. J.P. and Co., (1972) 1 SCC 618. https://main.sci.gov.in/jonew/judis/6909.pdf
[2] International Student Identity Card Association v. Abhishek Tiwari, 2017 (71) PTC 554 (Del). http://164.100.69.66/jupload/dhc/VIB/judgement/06-03-2017/VIB27022017SC1132016.pdf
[3] Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., AIR 2002 SC 117. https://indiankanoon.org/doc/1555192/
[4] CFA Institute v. Brickwork Finance Academy, 2020 (84) PTC 12 (Del)
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