Deceptive Similarity and Triple Identity Test Bar Registration of Phonetically Similar Marks for Identical Goods

The Petitioners, global electrical manufacturers, moved the High Court for the cancellation of Respondent No. 1’s registered word mark ‘PONTA’ (No. 4134589) and device mark ‘PONTA’ (No. 4885149) in Class-9.

The Petitioners are prior users of the mark ‘PENTA’ (registered in 1989), used for electrical goods with substantial goodwill and turnover exceeding ₹600 crores.

Respondent No. 1 applied for ‘PONTA’ on a "proposed to be used" basis in 2019 for identical goods.

Despite the Trade Marks Registry citing Petitioners' ‘PENTA’ mark in an Examination Report, Respondent No. 1 secured registration after a brief reply.

Respondents claimed adoption was inspired by the "Paonta Sahib" Gurudwara and that "Ponta" has various meanings in foreign languages.

1. Whether the Respondent’s marks ‘PONTA’ and the associated device mark are deceptively similar to the Petitioner’s registered mark ‘PENTA’

2. Whether the registration of the impugned marks should be cancelled/rectified under Section 57 of the Trade Marks Act, 1999

3. Whether the Respondent is entitled to the defense of "honest concurrent user" under Section 12 of the Act

The Court applied Section 11 of the Trade Marks Act, 1999, which prohibits registration of marks similar to earlier trademarks for identical/similar goods if there is a likelihood of confusion.

It further applied Section 57(2), which empowers the Court to expunge or rectify entries made without sufficient cause or wrongly remaining on the Register.

The "Triple Identity Test" (identity of goods, trade channels, and consumers) was utilized to determine deceptive similarity.

Additionally, principles regarding "honest concurrent use" under Section 12 were considered, requiring proof of bona fide adoption and use.

The Court found the Petitioners to be prior adopters with massive established reputation.

Comparing the marks, the Court noted that substituting ‘E’ with ‘O’ failed to create a distinction; visually, phonetically, and structurally, ‘PONTA’ was deceptively similar to ‘PENTA’.

The Court observed that the Respondent's device mark was designed so the 'O' mirrored an 'E', further inducing confusion.

Critically, the Court rejected the Respondent’s "Paonta Sahib" justification as a "cooked up" story, noting that this explanation was absent from the original reply to the Trademark Registry.

Since the goods were identical and targeted the same consumers (electricians/general public), the likelihood of confusion was high.

The Court held the Registry erred in granting registration despite an Examination Report objection which the Respondent failed to validly rebut.

The Court directed the Registrar of Trade Marks to remove/rectify the Register by expunging word mark No. 4134589 and device mark No. 4885149 within four weeks.

Defense under Section 12 was denied as the adoption was not found to be bona fide given the prior citation of Petitioner's mark.