Harmonizing the Echoes: Evaluating Anti-Dissection and Dominant Features’ Test in Nilkamal Crates v. Reena Rajpal

Harmonizing the Echoes: Evaluating Anti-Dissection and Dominant Features’ Test in Nilkamal Crates v. Reena Rajpal

This piece has been authored by Meenal Jain, II Year BA.LLB Hons., National Law School of India University, Bengaluru

Nilkamal Crates v Reena Rajpal is a recent Delhi High Court judgement in a series of cases related to trademark infringement in India, deliberating upon the question of phonetic identity. With high courts releasing inconsistent judgements on the topic, it is crucial to understand the existing standards for phonetic similarity in India to gain clarity on trademark registration and infringement. This piece argues that there is a need for an objective and uniform standard of phonetic similarity. It firstly, analyses and critiques Nilkamal Crates and exposits the legal themes present in it; secondly, posits that the current standards of phonetic similarity in India are insufficient; thirdly, proposes that the dominant word test for phonetic similarity be adopted as a rebuttable presumption to determine similarity.

Case Analysis of Nilkamal Crates

The plaintiffs sold plastic chairs under registered word marks and device marks under ‘Nilkamal’ since 1999. The defendants admitted to selling plastic chairs with the mark ‘Nilkranti’ and similar device marks. The plaintiffs, relying on Slazenger v Feltham claimed that the use of ‘Nil’ and the malicious intention of the defendants is sufficient to injunct them from using ‘Nilkranti’. Contrary to this, the defendants claimed that the device mark of ‘Nilkranti’ was different due to the absence of the lotus, which was the distinctive mark of ‘Nilkranti’.

The single-judge bench injuncted the defendants from using the device mark but allowed them to use the word mark ‘Nilkranti’. Device mark was injuncted because both logos were similar and a consumer of average intelligence could get confused. The court ruled that consumers would not remember minute details such as a lotus within the logo, thus establishing a prima facie case for the injunction. The court did not injunct the use of the word mark ‘Nilkranti’, holding that malicious intention cannot eliminate the necessity of proving similarities. Relying on S.17 of the Trade Marks Act (the Act), it held that the plaintiffs cannot vivisect and claim exclusivity over the suffix ‘Nil’. It decided that the similarity does not constitute infringement and relied on Amritdhara Pharmacy v Satya Deo to rule that the consumer would not remember trademarks separately in terms of ‘Nil’ and ‘Kamal’. Further, the court analysed the meanings of the roots of ‘Kamal’ and ‘Kranti’, holding that since the former meant lotus and the latter meant revolution, they are distinctive.

This reasoning of the court lacks a concrete legal foundation and does not conform to judicial precedents. Courts have, as in the case of Colgate Palmolive v Arun Narkar held that the presence of mala fide intentions and overall visual similarity, even if the words are different, are sufficient to grant an injunction. The ‘safe distance’ approach, supplementing the position that once a trademark is infringed, related trademarks must not be even remotely similar to the infringed trademark was not delved into by the court.

The court also did not holistically apply the cases cited by it. In Amritdhara Pharmacy v Satyadeo Gupta, an injunction was granted against the use of ‘Lakshmandhara’ because an uneducated consumer is unlikely to linguistically analyse meanings. While applying the standard set by In Re Pianotist, the court did not delve into its intricacies where the narrow and educated consumer base was presumed to research before buying the products. In Nilkamal, the product was plastic chairs, implying a larger and under-researched consumer base.  Parker J. in the Pianotist case cautioned against a rigid approach, holding that varied decisions could be reached.  Furthermore, Nilkamal raises larger questions of what standards are widely applied when considering phonetic similarity. This piece argues that the current standards for phonetic similarity, using the non-dissection test are insufficient.

Existing Standards and the Difficulties Therein

The concept of phonetic similarity finds mention in S.29(9) of the Act, read with S.2(1)(h) which accounts for deceptive similarity. The test laid down by Pianotist is widely applied to understand whether word marks are phonetically similar. S.17 of the Act supports looking at the trademark as a whole (anti-dissection test) instead of the dominant feature test. However, recently the latter, where a particular word is accorded dominant status,  has been increasingly used as a pre-determinate factor to establish similarities between trademarks.[i] Thus, multiple ambiguities persist in the present framework.

Firstly, it is unclear whether mere phonetic similarity is enough to constitute infringement. Courts in India have held that mere phonetic similarity is insufficient to constitute deceptive similarity if the products look different. This position has been contested in cases including Chinna Chettiar v Shri Ambal where an injunction was granted solely based on the phonetic similarity of ‘Andal’ and ‘Ambal’ despite visual differences. Courts have also delved into practical considerations of whether an average consumer can tell the product name to the shopkeeper without being confused. While statutorily, phonetic similarity is not a standalone cause for an injunction, the application by courts along with the need to protect public interest necessitates the creation of a separate standard.

Secondly, the extent to which pronunciations and conceptions can be altered to avoid infringement is ambiguous. Courts broadly apply either the anti-dissection test or the dominant feature test but there is a lack of consensus on their application. Courts have held that even if some words are dissimilar, the likelihood of deception due to a few identical words makes an infringement case, and have also often relied on pronunciation instead of spellings like Encotetestre and Anchor. However, the exact standard of pronunciation they rely on is unclear. The use of distinct pronunciations, despite common spellings is very common in India due to the regional and linguistic differences. In this social context, it is implausible to lay down a particular test for pronunciation.

Thirdly, the position of dominant features of a trademark is unclear when establishing infringement in India. While the statute provides for the anti-dissection test, multiple judicial pronouncements have concluded that single words can be accorded dominant status to issue injunctions. Solely using the anti-dissection test was insufficient since consumers remember particular aspects of a trademark which allows them to distinguish words. For instance, an injunction was granted against the use of ‘S Daazs’ since it could be construed as related to ‘Haagen-Dazs’. With the co-existence of multiple tests, it becomes essential to establish a hierarchy for their application.

The proposal for a Modified Standard

The position of giving primacy to anti-dissection does not encapsulate the wide consumer base which does not extensively recall products as a whole due to the predominance of particular words. This paper proposes that Indian courts adopt the dominant feature test as a rebuttable presumption which can be countered by establishing conceptual differences, or by proving that the goods are not compositely deceptive.

This standard would mitigate the possibility of deception by ensuring that first or major syllables are protected as distinctive identities of the brands. By using the dominant nature test for phonetic similarity, cases such as Nilkamal would be decided in favour of ‘Nilkamal’ because ‘Nil’ can be considered a dominant identity. To rebut this presumption ‘Nilkranti’ can undertake an empirical analysis to show that consumers identify the brand with ‘Kamal’ rather than “Nil” or that ‘Nilkamal’ is recognised as a whole by the consumers.  In this sense, mere phonetic similarity of dominant features would be enough to qualify for an injunction, which can be rebutted by the defendant through an empirical study, conceptual dissimilarities etc, This would ensure that malicious intentions to infringe upon trademarks cannot be condoned by minor changes in pronunciations or visible elements in the packaging, as has been done in the past to escape infringement claims when comparing ‘Piknik’ and ‘Picnic’

Further, the dominant nature test would not violate the anti-dissection test as has been held by courts since the former is a means to determine the latter, and both can be used in conjunction. Instead, it would allow the packaging and the visible similarity to determine the essential words by focusing on how a particular good is branded, or how the consumers perceive it. The standardisation of the dominant feature test with anti-dissection or conceptual differences as a means to rebut the presumption would be beneficial in combatting trademark infringement. It would establish an objective standard on which companies themselves can judge trademark infringement, mitigating the overlap of innocent similarities from malicious ones.


This paper has analysed the facts and holding of Nilkamal and expanded the irregularities present in the particular case to larger discrepancies in existing standards of phonetic similarity. While it has highlighted the advantages of the dominant feature test as a rebuttable presumption, the scope of this paper does not extend to its limitations, such as conflicts with existing case-law to determine similarity. In the future, scholarship can center around the conflation of various standards and the challenges of practical applicability of the dominant feature test due to the inherent subjectivity in such cases. Moreover, with new domains of advertising and branding emerging, it remains to be seen whether similar standards can be used uniformly across phonetics, visuals, experience advertising, metaverse advertising etc.

[i] South India Beverages Pvt. Ltd. v. General Mills Marketing, 2014 SCC OnLine Del 1953  [21]; Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v. Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933 [39].

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