Introduction
Imitation is the best form of flattery, yet there is a thick dividing line when it comes to using/copying a brand name. As known to all brand name serves as an identity of a product in as much similar to the name of a person and reflects all attributes of it. Adapting brand names of someone else without proper permission and authorization tantamount to malfeasance with the object of unjustified enhancement. Therefore in order to avoid such unwanted situations and conflict conducting a proper trademark search is necessary. While conducting a trademark search businesses need to look for trademarks that are similar in sound, appearance, or concept/ meaning to the intended mark.
Recently the Hon'ble Delhi High Court in the case of Institut Europeen D. Administration Des Affaires v. Fullstack Education (P) Ltd1, highlighted the importance of conducting a proper word mark search and phonetic search at the preliminary stage.
Understanding Phonetic Similarity in Trademark Registration
Before registering a brand name as trademark conducting a proper trade mark search is necessary. One important aspect of trademark search is evaluating the phonetic similarity that might exist between the intended mark and existing trademarks out there in the market. Phonetic similarity refers to the comparable nature of how two or more trademarks are pronounced. Phonetic search in general involves analyzing the sound/ pronounciation of a word rather than its spelling. This is particularly significant in languages such as English, where the relationship between sound and spelling can be complex and nuanced. The English language, for instance, is known for its numerous homophones ,i.e.,words that are pronounced similarly but have different meanings and different spellings. For example words like 'Night' and 'Knight' are pronounced in the same way but have different spellings and convey two distinct meaning.2
Phonetically similar names can create "brand confusion" significantly impacting the manner how consumers associate and remember brands, potentially allowing a lesser-known mark to unfairly benefit from the reputation of a comparatively more established one.
Hence conducting a Phonetic search in the trademark registration process enhances the overall protection of intellectual property rights, minimizes the risk of infringement and strengthens the brand identity by ensuring that trademarks are not only directly but phonetically distinctive as well.
Statutory Provisions Recognizing the Concept Of Phonetic Similarity
The Trade Marks Act, 1999 under Section 29(9) states that "where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly". This provision stipulates that a registered trademark can be infringed not only by the visual representation of the mark, but also by its spoken or phonetic use.
The Hon'ble courts in plethora of cases have emphasized the importance of considering both the phonetic and visual similarities between trademarks when assessing the potential infringement..3
The importance of the phonetic search can be ascertained from
the recent case of Institut Europeen D. Administration
Des Affaires v. Fullstack Education (P)
Ltd.4, wherein the
Hon'ble Delhi High Court has directed the Trade Marks Registry
to conduct a phonetic search of a trademark even at the preliminary
stage of the application process itself. In this case the
Petitioner and the Respondent were engaged in the business of
providing educational services and used the mark 
and 
respectively. The Petitioner contended that
its mark was founded in the year 1957 and
claimed to have obtained registrations for the word mark INSEAD
(Institut Europeen D Administration Des Affaires Association) and
device mark in classes 41, 35 and
16 on a "proposed to be used basis". The Petitioner
contended that the Respondent use of the mark INSAID (International
School of AI and Data Science) was deceptively and phonetically
similar to that of the Petitioner mark. The Petitioner further
claimed that the use of the mark INSAID by the Respondent had
created confusion amongst the students of the Petitioner. Taking
cognizance of the case the Hon'ble Delhi High Court in order to
determine the Phonetic Similarity in the case applied the classical
test which was postulated in Pianotist Co.'s
Application, Re, (1906) 23 RPC 774, wherein it was
held: "You must take the two words. You must judge them,
both by their look and by their sound. You consider the goods to
which they were to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact,
you must consider all the surrounding circumstances; and you must
further consider what was likely to happen if each of those trade
marks was used in a normal way as a trade mark for the goods of the
respective owners of the marks"5
After applying the test the court opined that the marks of
Petitioner and Respondent are phonetically and confusingly similar.
The court further held that "Petitioner is the prior
registered user of the mark INSEAD and its device
mark under class in class 16, 35 and
41 since 2007 and 21012 respectively and held that the use of the
acronym INSAID by the Respondent which was
phonetically similar to the acronym used by the Petitioner is
confusingly similar and therefore cannot be said to be used in good
faith and thereby set aside the registration of the Respondent mark
INSAID.
This ruling by the Hon'ble High Court of Delhi reflects the importance of thorough trademark searches to prevent confusion and infringement in the marketplace highlighting the critical role of phonetic similarity in ensuring the distinctiveness and protectability of trademarks.In similar lines the Hon'ble Delhi High Court in the case of M/S Lakme Ltd. v. M/S Subhash Trading6, established that the brand names "Lakme" and "LikeMe" bore significant resemblance. Despite the difference in their spellings, the court concluded that the phonetic similarity between the two marks can potentially mislead and confuse consumers regarding the plaintiff's products.
In another case of Encore Electronics Ltd. v. Anchor Electricals & Electronics Pvt. Ltd.7, wherein the marks in question were 'ENCORE' and 'ANCHOR', the Hon'ble Bombay High Court held that even though the two words are pronounced differently in the countries of their origin, the pronunciation of two words is similar in India, therefore the marks will be considered phonetically similar.
In the case of Consitex SA v. Kamini Jain and Ors.8, wherein the dispute was between the marks, 'ZEGNA' (pronounced as 'Zen-Yah') associated with an Italian luxury fashion brand, and an India brand 'JENYA', the Hon'ble Delhi High Court ruled in favour of the plaintiff, emphasizing that these two marks were phonetically similar as the plaintiff was able to provide documents demonstrating that 'ZEGNA' is pronounced as 'Zen-Yah'.
Conclusion
It is inferred from the above that conducting a thorough phonetic search is essential prior to initiating the trademark registration process. Understanding the impact of phonetic similarity on brand recognition and consumer perception is crucial for protecting intellectual property rights and to avoid legal conflicts at the time of objection by the Trademark registry as well as opposition by a third party. By recognizing the significance of trademark phonetic search = businesses can ensure that their trademarks are both visually distinct and phonetically unique which will save time and resource and subsequently result as a cost effective step as the same will help in avoiding the statutory delays. There are high chances that a unique trademark will smoothly pass the stages of trademark objection and trademark opposition.
Footnotes
1 C.O. (COMM.IPD-TM) 1/2021
2 https://www.tramatm.com/trademark-dictionary/phonetic-similarity
4 C.O. (COMM.IPD-TM) 1/2021
6 1996 PTC (16)567
7 2007 SCC Online Bom 147
8 CS (OS) No. 629/2011
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.