Phonetic similarity alone could be sufficient to establish deceptive similarity
Introduction:
The case of K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras & Anr., decided by the Supreme Court of India on April 14, 1969, is a landmark judgment concerning trademark law, particularly regarding phonetic similarity and deceptive resemblance. The appellant, K.R. Chinna Krishna Chettiar, sought registration of a trademark containing the name "Sri Andal," while the respondents, Sri Ambal & Co., opposed it on the grounds that it was deceptively similar to their registered trademark "Sri Ambal." The case revolved around the question of whether phonetic similarity between two marks could lead to confusion among the general public, even if they were visually distinct.
Factual Background:
The appellant, K.R. Chinna Krishna Chettiar, was the proprietor of Radha & Co., a business engaged in the manufacture and sale of snuff. The respondents, Sri Ambal & Co., were a partnership firm also involved in the snuff trade, operating in Madras and beyond. Both parties had well-established business activities in the snuff industry.
On March 10, 1958, the appellant applied for the registration of a trademark for snuff under Class 34, featuring a label with the image of the goddess Sri Andal and the words "Sri Andal Madras Snuff" in multiple languages. The respondents opposed this application, arguing that it was deceptively similar to their registered trademarks.
The respondents were proprietors of two registered trademarks: one consisting of the word "Sri Ambal" and another featuring an artistic label with an image of the goddess Sri Ambal, along with the phrase "Sri Ambal Parimala Snuff." They contended that "Sri Andal" and "Sri Ambal" were phonetically similar and that the use of "Sri Andal" for snuff would likely mislead consumers into believing that the appellant’s product was associated with their well-established brand.
Procedural Background:
The appellant's application for trademark registration was initially examined by the Registrar of Trademarks, who ruled in favor of the appellant, holding that "Sri Andal" and "Sri Ambal" were not deceptively similar. The Registrar reasoned that despite certain common letters, the phonetic differences were sufficient to prevent confusion.
The respondents challenged this decision before the Madras High Court. A Single Judge of the High Court overturned the Registrar’s decision, holding that the marks were indeed phonetically similar and likely to cause confusion. The appellant then filed a Letters Patent Appeal before a Division Bench of the Madras High Court, which upheld the Single Judge’s ruling. Following this, the appellant appealed to the Supreme Court of India.
Issues Involved in the Case:
The primary issue before the Supreme Court was whether the trademark "Sri Andal" was deceptively similar to the registered trademark "Sri Ambal" under Section 12(1) of the Trade and Merchandise Marks Act, 1958? Whether phonetic similarity alone was sufficient to constitute trademark infringement, even when there was no visual resemblance between the marks?
Submissions of Parties:
The appellant argued that "Sri Andal" and "Sri Ambal" were distinct names with different meanings, as they referred to two different Hindu goddesses. It was contended that the phonetic similarity was coincidental and that consumers would not be confused because they would recognize the separate religious significance of each name.
The appellant also relied on the decision of the Registrar of Trademarks, who had expert knowledge of such matters and had ruled that the two marks were not deceptively similar. The appellant further contended that visual differences between the marks, including their distinct artistic representations, would prevent consumer confusion.
The respondents countered that phonetic similarity was the most important factor in determining deceptive similarity in trademark law. They argued that consumers, particularly those who were unfamiliar with Hindu religious distinctions, would likely confuse the two marks. They further emphasized that "Sri Ambal" had been in use for several decades and had acquired significant goodwill, and allowing the registration of "Sri Andal" would unfairly dilute their brand identity.
Discussion on Judgments Cited:
The Supreme Court relied on several key judgments to determine whether phonetic similarity alone was sufficient to constitute deceptive similarity.
The court referred to In the Matter of Broadhead's Application (1950) 57 R.P.C. 209, where it was held that the test for deceptive similarity must consider both visual and phonetic resemblance. It also cited Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd. (1942) 59 R.P.C. 127, where it was determined that phonetic resemblance played a crucial role in consumer perception, even when visual differences existed.
The ruling in De Cordova & Ors. v. Vick Chemical Co. (1951) 68 R.P.C. 103 was particularly relevant, as it established that a trademark could be infringed even if the infringing mark did not completely replicate the original, as long as an essential feature of the original mark was reproduced in a way that created confusion.
The court also referred to Application by Thomas A. Smith Ltd. (1913) 30 R.P.C. 363, where it was held that even words with distinct meanings could be deceptively similar if they sounded alike when spoken aloud.
Reasoning and Analysis of the Judge:
The court held that the key factor in determining deceptive similarity was the likelihood of confusion in the minds of ordinary consumers.The court observed that while there was no visual resemblance between "Sri Andal" and "Sri Ambal," their phonetic similarity was striking. It emphasized that in a noisy marketplace, consumers might not differentiate between the two names, especially when ordering snuff verbally.The court rejected the appellant’s argument that consumers would recognize the religious distinction between Andal and Ambal, noting that not all consumers were Hindus or well-versed in Hindu mythology. It held that an average consumer with imperfect recollection was likely to be misled by the similarity in pronunciation.The court also ruled that the absence of actual confusion did not negate the likelihood of future confusion, particularly as the appellant’s business was relatively new compared to the respondents' well-established brand.
Final Decision:
The Supreme Court upheld the decision of the Madras High Court and dismissed the appellant’s appeal. It ruled that "Sri Andal" was deceptively similar to "Sri Ambal" and could not be registered as a trademark under Section 12(1) of the Trade and Merchandise Marks Act, 1958. The court also denied the appellant’s claim of honest concurrent use, as it had failed to establish a long-standing independent reputation.
Law Settled in this Case:
The judgment reaffirmed that phonetic similarity alone could be sufficient to establish deceptive similarity under trademark law, even in the absence of visual resemblance. The ruling clarified that the test for deceptive similarity should be based on the perception of an average consumer with imperfect recollection. It also established that religious or semantic distinctions between words do not necessarily prevent consumer confusion if the words sound alike when spoken aloud. Furthermore, the court emphasized that a well-established brand enjoys stronger protection against new entrants using deceptively similar marks.
Case Title: K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co., Madras & Anr.
Date of Order: April 14, 1969
Case No.: Civil Appeal No. 749 of 1966
Neutral Citation: 1970 AIR 146, 1970 SCR (1) 290, 1969 SCD 1048
Court: Supreme Court of India
Judges: Hon’ble Mr. Justice R.S. Bachawat, Hon’ble Mr. Justice S.M. Sikri, Hon’ble Mr. Justice V. Ramaswami
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
