How ‘Deceptively Similar’ back kicks Sardarbuksh Penalties come along when; domestic Companies use names of big brands in a funnier manner to promote their product. This time it is a coffee company, SardarBuksh, that sound deceptively similar to the very famous Starbucks. Started with a business from cart and now after opening five outlets throughout Delhi the brand SardarBuksh now have to pull it all back and change it to Sardarji-Buksh in order to make it distinctively separate from Starbucks as per an interim order of Delhi High Court. The real issue behind the whole controversy is; whether trademark of Sardarbuksh is deceptively similar to Starbucks trademark phonetically or visually? The analogy behind deceptively similar stems from Section 2(1)(h) read with Section 11 of the Trademarks Act, 1999 that states; when two marks are placed beside each other causes confusion or deceive the spectators it would be deceptively similar and hence cannot be registered. As the Trademark Act do not set out fixed criteria for the concept of deceptive similarity, the plethora of judgments by Supreme Court and High Court does. According to judgments several principles are to be considered for deciding the scope of deceptive similarity such as Principle of phonetic and visual similarity, rule of entirety, test of likelihood and confusion, goodwill etc. are some of the important tests. Also in the cases of Polaroid Corporation vs. Polarad Electronics Corporation 287 F.2d 492 (1961) and National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR 1953 SC 357 it was held that the controversy of deceptively similar can only be decided by stepping in the shoes of purchaser, who is considered to be a man with ordinary intelligence. If the identification of two brands causes confusion to the purchaser then it would be right to say they are deceptively similar. Putting these tests on the image above it would make Sardarbaksh deceptively similar to Starbucks without any doubt. As Starbucks is a globally recognized trademark registered across borders compared to trademark Sardarbuksh dealing in similar products, it would be unfair on Starbucks if such trademarks are allowed. Although in cases, where the business or products dealt under trademarks are distinct the Supreme Court seems to have no problem, such as in the case of M/s Nandhini Delux v. M/s Karnataka Co-operative Milk Producers Federation Ltd. CIVIL APPEAL NO. 2943-2944 OF 2018 where due to difference in the variety of products traded and difference in visuals of both companies the Court opined trademarks ‘NANDINI and NANDHINI’ to be non-infringing. As the registration of deceptively similar names are prohibited as per Section 11 of the Trademarks Act 1999. By looking at the name Starbucks and SardarBuksh it might sound a little bit different but not entirely, leaving a room for confusion. While deciding the issue related to ‘deceptively similar’, usage of names or logos, the Courts tend to delve deep to figure out the class of products dealt and the quantity of harm on the market of either company or unfair competition in the market. Although, figuratively looking at the opinions of Apex and High Courts stands clear that usage of such deceptively similar trademarks are prohibited and will be taken down if it causes confusion. Leaving the legality of the trademarks aside and talking about the effect of such deceptively similar trademarks on the market would be an identical stance. Starbucks having a more global image compared to SardarBuksh would effect not only the image of Starbucks in India but also globally. Taking Pakistan as an example, there already exist Sattarbucks café with a different logo, poses a threat to Starbucks sale if it decides to start a business their. According to the sources the name of SattarBucks Café was changed on receiving a notice from Starbucks of an infringement. As the products that will be served at Sardarbuksh and Starbucks belong to similar classes it would confuse the consumer as if Starbucks is trying to come up with another concept. The social media platform also takes hit over these issues and spread it across the globe rapidly resulting in injuring the prolonged repo of Starbucks. Ultimately, the two companies have employed there best resources to get a winning deal but, it is tougher to convince the court that using deceptively similar trademarks would not effect the other companies market. If the court opines in favor of Starbucks it would make SardarBuksh change to Sardarji-Buksh for any future business.
Abhi Bansal Graduate of OP Jindal Global University.