What this decision essentially laid down was that a case of infringement could have been sustained under Section 29(5), if the Defendants had used “Mankind” as part of their name or any other registered trade mark of the Plaintiff. Merely because “Mercykind” may be deceptively similar to “Mankind” or any other registered trade mark of the Plaintiff with “Kind” as prefix or suffix, it would not amount to infringement under Section 29(5).

The quandary that we face is whether the Supreme Court fundamentally overturned the Delhi High Court’s 2018 verdict with the Renaissance judgment. The primary factor at play in this dispute was a prima facie resemblance between the names “Renaissance” & “Sai Renaissance”, which is somewhat, if not entirely similar to “Mankind” & “Mercykind”. A generic word, in apparent terms, though incapable of causing confusion among the general public, has the potential to give rise to complexities if it is associated with multiple products or services of the similar nature. When the similarity of the name of two products or services is taken into account, the evidence of actual confusion, when analysed, should be impressive to an extent that the consumer is barely able to distinguish between the two or not at all.

It is still possible for two different businesses to have similar names or marks. However, the real question is determined by the potential for the confusion of consumers. If two similar marks are used in different industries that are located in different markets, confusion is unlikely. On the other hand, if two businesses that are using similar marks are operating in markets that overlap, priority will be an issue.

This brings us to the second, but equally important factor at play, which is the fact that both the aggrieved party and the infringer were in similar businesses where the latter was using a deceptively similar trademark in relation to or upon printed matter, periodicals, books, instructional and teaching material, stationery, manuals, magazines and office requisites, and for hotel, restaurant, catering, bar and cocktail lounge services, provision of facilities for meetings, conferences and exhibitions and reservation services for hotel accommodations amounting to infringement of the Appellant-Plaintiff’s registered trademark.

The guiding principle of trademarks is to avoid consumer confusion. When the consumer purchases a product bearing a mark or a particular type of name, they purchase an ‘experience envelope’ symbolically depicted and/or represented through that mark or name, which helps to construct its identity. Courts look at several factors, including whether or not consumers are likely to be confused by two businesses that operate in the same industry.

On careful appraisal of both the judgments of the Delhi High Court and the Supreme Court, one can’t help but notice that it unfortunately boils down to the degree of confusion likely to ensue from the resemblance of the names or marks, as it is indicative, to a major extent, the measure of public inconvenience. Two similar products from Mankind and Mercykind cannot cause confusion within prudent members of the public for the use of the suffix “kind” in the trade name. It does not prima facie indicate or implicate any notable similarity as the word “kind” is not being used in any way, as a means to distinguish their products or give them a separate identity. Had that been the case, it would probably have made a fit case of trademark infringement. The Supreme Court, on the other hand, dealt with a case where “Renaissance” and “Sai Renaissance”, though distinguishable per se, was likely to cause confusion within the public. The “deceptive similarity” factor could not be ignored as it has the potential to indicate a sort of affiliation or association, since both were involved in businesses of a similar nature.

To adopt a proper textual and contextual interpretation, it becomes important to read the aforementioned judgments with reference to the language as has been used by the Legislature, particularly in Sections 29(5) and 29(9) of the Trademarks Act, 1999. The word “kind” was not being used as a distinctive element, specifically with respect to the trade name of Mercykind Pharmaceutical Private Limited, whereas the word “Renaissance”, in a sense, owing to the international presence and reputation of the aggrieved party, was a distinctive element with regard to its brand image. Hence, the Apex Court allowed their appeal as it was a fit case of infringement of trademark.

So, what conclusion did we arrive at? Did the law get stricter? Does it open the floodgates to hundreds of such infringement suits? It is important to understand why a mark is likely to cause marketplace confusion. Likelihood of confusion’ is the gold standard by which infringement is measured across almost every region although, of course, specific phraseology may vary. Many regions have different tests that they apply to assess likelihood of confusion with set factors to measure. These factors can vary on the basis of the facts applicable to a particular case at hand and so factors applicable to one’s region and circumstances assume primal importance. Nonetheless, some general principles apply. It really depends on the nature of the industry, the individual market characteristics, the target customers/ clients, honesty of concurrent use and the strength of the trademark of the company or organization which started using it first. “Strength” in this context, is defined as advertised more frequently, more unique, and less diluted. Consumers associate the trademarks, trade dresses etc. with the goodwill of the brand. Organizations should ideally be aware of similar marks and/or names and whether the use of these marks or names constitutes or is likely to constitute infringement of trademark.