The Weekly Obiter

HON’BLE KARNATAKA HIGH COURT ON ‘DECEPTIVE SIMILARITY’ AND ‘CONFUSION’ IN TRADEMARK AND PASSING OFF: NOVEMBER 09, 2017

November 24, 2017

The Hon’ble Karnataka High Court in the matter bearing “Regular First Appeal No. 17 of 2014, titled as M/s Adiga Sweets vs. M/s Vasudeva Adigas Fast Food Pvt. Ltd. provided an elaborative jurisprudence on ‘deceptive similarity’ and ‘confusion’ created by similar trademarks amounting to infringement and passing off of the trademark.
The question raised before the Hon’ble High Court was whether the use of the name Adiga's as a suffix or prefix would prevent a person from claiming that dissimilarity exists between the names or not. The Hon’ble Court placed reliance on the judgement of Hon’ble Supreme Court titled “Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2001 SC 1952” and observed in the present case that, “Any suffix or prefix to the name "Adiga" would not prevent the person from bringing an action against another person for infringement or passing off. Even if the name Adiga's were suffixed or prefixed with other name, still it would be a case of infringement and/or passing off. The same principle is applicable to the present case.”
The Hon’ble High Court while dismissing the appeal came to the conclusion that the phonetic similarity between the common name “ADIGA’S” has to be considered as a major factor while dealing with a case of passing off. Thus, considering the fact that both the parties are dealing with food items, considering the fact that the respondent has earned a goodwill in the market for the food items, considering the fact that the appellant entered the market much after the respondent, considering the common customers both the parties would have shared, considering the use of common name “ADIGA’S” in the name of both the businesses, the Ld. Judge was justified in concluding that the consumer is most likely to confuse the sweets made and marketed by the appellant as the goods of the respondent. Thus, the appellant is passing off his goods as that of the respondent. 

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