Student at the Rajiv Gandhi National University of Law, Patiala
One day, Mr. Scully and Mr. Hitchcock went to a pharmacy to buy some over-the-counter (OTC) tablets for their respective stomach issues. Mr. Scully was facing constipation issues, while Mr. Hitchcock had a troublesome case of diarrhea. Sadly, their troubles didn’t seem to end there. It was a busy day, with tremendous rush at the pharmacy, Mr. Scully asked for a laxative and Mr. Hitchcock, for an anti-diarrheal tablet. The pharmacist picked out and kept on the counter, ‘Clearmax’, a laxative, and ‘C-max’ an anti-diarrheal tablet, and attended to others in the crowd, while Scully and Hitchcock, in their confusion, picked up the wrong tablets and went home. It is safe to say, the results were disastrous!
Does this situation sound too outlandish, or too unlikely to happen? Well, surprisingly enough, such cases of deceptively similar sounding and looking trademarks/brand names, causing confusion amongst the common man, are more common than thought.
In a certain real-life case[1], a 50-year-old female patient was prescribed ‘Volmax’, a medicine aimed at providing relief in a case of bronchospasms (lung related issue), but instead she was administered ‘Flomax’, a medicine that aimed at treating benign prostatic hyperplasia (increase in prostate gland). This resulted in her ending up undergoing surgery for a chronic sinus infection, as a result.
In the present case, both the medicines had a look-alike and sound-alike proprietary name and also similar dosage strengths. The error occurred when the pharmacist’s verbal prescription of the medicine, was confused with the other similar sounding medicine, and was in turn written down incorrectly.
The present case is just one amongst the numerous others, and to understand this issue it is important to look at the intriguing doctrine of ‘Average Intelligence’ and ‘Imperfect Recollection’.
Of Average Intelligence and Imperfect Recollection
The concepts of ‘average intelligence’ and ‘imperfect recollection’ are essential aspects in trademark disputes. In cases of possible trademark infringement or passing off, the Courts, more often than not, rely on these concepts as a standard to judge the claims of deceptive similarity. Over the years, several judgments across the globe have delved into these aspects of trademark disputes, and have developed a layered discourse around them.
In India, the Apex Court in the landmark case of Amritdhara Pharmacy v. Satyadeo Gupta[2] had laid down the test for determining the similarity between two marks, and one of the tests was – the Reasonable Man’s Test or the doctrine of an average intelligence, wherein the difference between two marks was to be assessed from the view-point of a man with average intelligence and imperfect recollection.
As amusingly observed by the Court, the ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes.[3] Hence, it is vital to assess the claims from the perspective of an average man with an imperfect memory or recollection, but not an ignorant, thoughtless and incautious purchaser.
Even outside India, in the case of Aristoc Ltd. v. Rysta Ltd[4] the Court had observed that, “the court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants”. Similarly, in De Cordova v. Vick Chemical Co.[5], Lord Radeliffe observed, that “the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or some significant detail than by a photographic recollection of the whole”.
Benchmarks for Assessing Deceptive Similarity
In case of a possible trademark infringement dispute, the foremost thing to clarify and set aside, is to see whether the trademark is ‘identical’. If the mark is identical, then there is no further scope for doubt and it most certainly is an infringement. In case the mark is not identical, it is then that the Courts apply the doctrine of an average man, to see if the mark is deceptively similar enough to cause confusion. The onus is on the plaintiff, to establish that the trademark in question, being used by the defendant is ‘deceptively similar’ to that of the plaintiff.[6]
Several factors[7] are considered when assessing deceptive similarity, such as – the possibility of slurred pronunciation, distortion of sound via telephone or otherwise, the syllabic structure of the words, or even the way the product is marketed i.e., whether it is sold over the counter or is carefully selected from racks/shelfs by the customer.
The parameters for assessing similarity will differ in case the customer is buying goods such as clothes, which are carefully selected, compared and tried by the customer, in contrast to a customer buying over-the-counter medicines from a pharmacy, where the stakes are invariably higher.
Additionally, in a country like India where a variety of dialects, accents and colloquial speaking styles have a significant impact on a customer’s buying experience, it becomes all the more important for the Court to consider a variety of factors when deciding if the sound or look of a mark resembles that of another.
How much is too much?
Despite the importance, these doctrines should not be stretched beyond the necessary limit. While assessing a mark, it is important for the Courts to consider the possible class of people likely to be affected, and also that no more than the ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed.[8]
This was also observed in the Seiko Kabushiki Kaisha v. Montres Rolex S.A.[9] case, which involved the question of similarity between the marks ROOX and ROLEX. In this case the court held that the mark ROOX (which was an invented term) would be pronounced as roo-ks/roo-cs, which is a mono-syllable, while ROLEX would be pronounced as ro-leks, which is dual-syllable. The court did not find any phonetic or aural similarity between both the words, and hence did not apply the doctrine of imperfect recollection. Hence, as seen above, this doctrine cannot always be applied in every case.
Yet, despite the common sentiment of not stretching the doctrine beyond its limit, the approach to cases involving such questions, is different in India as compared to the UK. As opposed to the approach of focusing on the 'broad dissimilarities', the Indian courts focus on looking at the 'broad similarities' between two marks, when assessing whether or not they are deceptively similar.
This position was cleared by the Supreme Court, in Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd[10], when it reviewed the judgement given in Kellog Company v. Pravin Kumar Bhadabhai[11] wherein the Court had held that the defendant's trade-dress for a corn-flakes carton, despite its similar design and colour scheme (broad similarities) was not deceptively similar so as to confuse the class of people who bought it, because the names of the products were very different (broad dissimilarity).
The court in Kellogs had rejected the test of average intelligence and imperfect recollection in this case. This focus on 'broad dissimilarities' was supported in SM Dyechem Ltd v. Cadbury[12] as well, but both of these judgements were eventually held 'not good in law in Cadilla' as the Indian courts lay more emphasis on the common features between two marks rather than their essential differences.
Conclusion
Despite the numerous parameters laid down in different judgements, it is true that in the end, there is no hard and fast rule regarding the level of similarity required for a mark to be considered deceptively similar enough to cause confusion. The judgment of the Courts should be based on the likelihood of the average purchaser being deceived in the scenario, which is relative per case. The resemblance can be phonetic, visual or involving the basic idea surrounding the mark.[13]
The ‘Average Man’ in each situation will be expected to have a different level of understanding and recollection, and the same would also be immensely influenced by the diverse demographics involved in every goods market. Yet, from the Indian Courts' perspective the test for average intelligence and imperfect recollection would always be from the perspective of an unwary buyer.[14]
[1]Medication Errors Associated with Flomax and Volmax, U.S FOOD AND DRUG ADMINISTRATION (Aug. 13, 2015), https://www.fda.gov/drugs/medication-errors-related-cder-regulated-drug-products/medication-errors-associated-flomax-and-volmax. [2] Amritdhara Pharmacy v. Satyadeo Gupta AIR (1963) SC 449. [3] Parle Products (P) Ltd v. J. P. & Co. Mysore (1972) 1 SCC 618. [4] Aristoc v. Rysta [1945] 62 R.P.C. 72. [5] De Cordova v. Vick Chemical Co. (1951) 68 RPC 103. [6] M/S S.M. Dyechem Ltd v. M/S Cadbury (India) Ltd 2000 5 SCC 573. [Dyechem] [7] London Lubricants (1925) 42 R.P.C. 264. [8] Relative Grounds for Refusal of Registration, INTELLECTUAL PROPERTY OFFICE OF SINGAPORE (Nov, 2015), https://www.ipos.gov.sg/docs/default-source/resources-library/trade-marks/circulars/2015/7-relative-grounds_nov2015.pdf. [9] Seiko Kabushiki Kaisha v. Montres Rolex S.A. (TM No. T99/15212J). [10] Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd JT 2001 (4) SC 243. [Cadila] [11] Kellog Company v. Pravin Kumar Bhadabhai 1996 PTC 16. [12] Dyechem, supra note 6. [13] Cadbury India Limited and Ors. v. Neeraj Food Products 142 (2007) DLT 724. [14] Cadila, supra note 10,
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