Deceptive Similarity in Trademarks- Facebook vs Facebake judgement
In today’s globalised technological savvy world, one should be acutely attentive to the implications of infringing the laws of India especially regarding property Rights. Nobody could even slightly wonder that a cake shop will get a restraining order from the Delhi judiciary for using the name ‘Facebake’ or ‘Facecake’. The Bakery’s name and therefore the signage strongly resemble Facebooks’ official colours: blue- on- white colour scheme and patterns which is usually related to the social media giant facebook. Thus, wrongful similarity within the logos, patterns, colours or visual representation adopted by Noufel Malol, owner of the bakery, depicted a mala fide intent in obtaining unfair advantage, by deceptively using similar marks which amount to unfair competition. There are various important judgments, some stated below citing the role of deceptive similarity in infringement of trademarks in India.
Concept of Deceptive Similarity
In this particular case, the most important issue lies within the major concept of deceptive similarity which has been discussed within the Trademarks Act, 1999. As per Section 2(h) of the act a trademark must be deemed to be deceptively like another trademark if it’s nearly similar with the opposite mark as likely to deceive or cause any confusion within the mind of others. The concept of deceptive similarity has been widely recognised in concert of the grounds for trademark infringement under various trademark regimes. Under Indian Trademark regulations, the deceptive similarity is additionally a ground to not grant a trademark registration. However, the trademark act doesn’t meet any particular criteria which might settle the ambit and wide scope of this phrase ‘deceptive similarity’. For adjudicating cases of the intellectual properties and deceptive similarity, principle of phonetic and visual similarity, reputation, goodwill, test of likelihood etc are recognised as important criterias to check the concept by the judiciary.
Facts of the case
Meta, which owns Facebook, has recently filed a case against a Bangalore based cake shop owned by Noufel Malol. This pertained to the very fact that the bakery’s name and signage strongly resembled Facebook’s official colours and patterns, including a deceptively similar logo. Facebook, which has almost 240 million users in India, filed a suit against the bakery owner. The company’s counsel argued in court that the shop was mortifying Facebook’s trademark and bewildering the general public. This may result in an unwary consumer being a minimum of inquisitiveness about being attentive of the defendants as having some quiet reference to the plaintiff. The mala fide intent of the defendant is additionally evident from the very fact that upon the knowledge of the ad-interim injunction passes by this court, the defendants changed the mark from the ‘facebake’ to ‘facecake’, thereby changing just one alphabet, however chose to not appear before thc court.
Judgement by the Delhi High Court
Delhi High court has permanently restrained the bakery owner from using the name ‘Facecake’ and ‘Facebake’. together with this, the court has barred the bakery from using any trademark resembling facebook for its products and services, and also the web site facebook.in, related email address. Justice Navin Chwala has ordered the bakery owner to deliver all completed and uncompleted material which include cards, locks, stationery, accessories, labels, signage, and other materials having the ‘Facebook’ marks. These materials would be delivered to Meta for the aim of erasure. In addition to the current, the shop owner has been ordered to pay a penalty of Rs 50,000 to Meta as a nominal charge. The Delhi tribunal also ordered the shop owner to shoulder the burden of the value of Meta’s suit. The bakery’s name and its signage are exactly like Facebook’s official colours and patterns. Even the brand of the shop resembles Facebook’s logo. Facebook’s counsel argued within the court that the bakery was degrading Facebook’s trademark which is creating confusion among the general public. The order reads “ It can cause an unwary consumer to be at a minimum fascinated by being attentive of the defendants as having some reasonable reference to the plaintiff. The mala fide intent of the defendants is additionally evident from the very fact that upon the knowledge of the ad-interim injunction gone by this court, the defendants changed the mark from Facebook to Facecake, thereby changing only 1 alphabet, however, chose to not appear before this court to defend the suit despite service”, the order reads.
Other important judgements referring to deceptive similarity in India
As noted above there are not any fixed requirements for the definition of deceptive similarity within the Trademarks Act, the Indian courts have addressed a variety of cases that have identified the foremost relevant standards and guidelines for deceptive similarities. a number of the important judgments per the world of deceptive similarity are stated below-
Delhi Lakme ltd v. Subhash Trading
Plaintiff sold cosmetic products under the Lakme trademark and also the defendant used the LikeMe trademark for the identical class of products. it absolutely was held that there was a resemblance between the 2 words. because it was also stated, the words also are phonetically similar. within the mind of the client, there’s a prospect of deception and confusion to be caused.
M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas
The plaintiff company was involved in the production and sale of species and condiments sold under the MDH logo on a red background of three hexagons. The defendant used the ‘MHS’ logo in a very red background hexagonal device. Both marks are found to be similar and certain to cause confusion and deception. The plaintiff also requested an order restricting the defendant to the employment of the logo- MHS or the other trademark that’s identical or deceptively like the trademark logo- MDH.
Mahendra and Mahendra Paper Mills Ltd. V. Mahindra and Mahindra Ltd
In 2001, the Supreme Court ruled that, on the premise of phonetic similarity, the name ‘Mahendra and Mahendra’ infringed the first brand name ‘Mahindra’ which had been in use for five decades and thus acquired a particular and secondary meaning.
Conclusion
It is extremely necessary in today’s time and age when the world is blooming with technology and sudden escalated emphasis on property rights, that one should remember the results of infringing it. There are an oversized number of cases where the defendants have mala fide intention of gaining consumer preference by engaging during a very series of deceptive similarities either by having the identical name or similar logo. This puts off the plaintiff as their goodwill and reputation is discoloured because of such acts. This judgement also threw a light-weight on the country’s burgeoning trademark ecosystem that has seen infringement cases filed left, right and centre. Trademarks are unenforceable across India specifically segments and in some the shortage of monitoring regulations. The bustling flea markets of Mumbai and Delhi are testament to the wide array of cheap knock offs available. Be it ‘Adibas’ or ‘Hike’, many brands with no manufacturing addresses populate the streets and corners building on the eponymous brand they rip-off. The rip-offs are rampant because trademark infringements in such cases are impossible to trace. While injunctions are going to be obtained against unknown persons in such cases, it’s difficult to trace these dubious operators in most cases.
Author: Akshita Sharma, a student of Symbiosis Law School (Pune), in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
