Phonetic Justice for Trademark
This article was contributed by Swastika Chakravarti.
How important are phonetics in trademarks, you ask? The General Court of the European Union has an answer for you. In deciding a matter between Pay TV giant, Sky and Microsoft (owners of Skype), the Court relied on the similarity of signs in terms of concept and phonetics to deny Microsoft a trademark for Skype in Europe. Holding that the pronunciation of ‘y’ in Skype is no shorter than in Sky, the Court seems to feel that ‘Skype’ is most obviously identifiable with the commonly used word ‘Sky’. The logo of a cloud helps the public in making this connection (“heighten the confusion”, as the Court calls it!).
Further, the contention of well-knownness did not convince the Court as the term was held to be generic and could be a descriptive term for services in the field of telecommunication. The object of the denial seems to be to prevent confusion in respect of the services covered by the sign, some of which were in common with what Sky provided.
The issue of trademark infringement due to phonetic similarity is embodied in Section 29(9) of the Trademark Act of 1999, the basis for which is “deceptive similarity”. The Delhi High Court held ‘Jenya’ to be deceptively similar to ‘Zenga’ because the latter, a registered mark, was pronounced as zen-yah. Similar judgments have been held in relation to ‘Encore’ and ‘Anchor’, considering the phonetic structure and the “ring in the ear”. Thus the test has boiled down to whether the confusion can make a consumer buy one’s product imagining it to be the other’s.
A combined reading of Section 29(2) and 29(9) tenders the conclusion that the pronunciation of the mark is clearly relevant in determining infringement. But would Skype have been denied registration in India? Section 11 of the Trademark Act does allow the exception of well-knownness to infringement. But where both the marks are well known, and they sound deceptively similar, it is likely that the registration to the latter would be denied on the grounds of preventing confusion for the public. So, the Indian Courts would be likely to decide the case along similar lines.
– Contribution of Swastika Chakravarti – Intern, BananaIP Counsels