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other hand, if it of a sort that is uncommon, or ad-hoc, then the burden would be correspondingly lighter.93 In the latter variety of cases it is easier to prove that when consumers see the mark in question, they associate it with the plaintiff. However, the defendant may still maintain that consumers associate the name with nothing in particular. This would have to be preempted by proof. The plaintiff must show that a substantial number of potential consumers make the association. Deceptive similarity : The plaintiff must show that the mark used by the defendant is such as to lead the average potential consumer to believe that the products concerned originate from him. It is not very often that the defendant uses exactly the same mark as the plaintiff.94 However, this does not prevent the mark form causing confusion in the minds of the Customers. The term “deceptive similarity� was evolved as a result. Varying burdens of proof : According to the nature of the mark used, the degree of burden on the defendant varies : Fanciful or imaginative marks : There is a negligible burden to prove deceptive similarity in such cases, as there is very little possibility that the defendant used a similar mark bona fide. In these cases, the burden of proof shifts to the defendant to show that his use of the mark was in fact innocent. Such a shifting of the burden is warranted under section 106 of the Evidence Act. Suggestive marks : The burden in these cases lies more heavily on the defendant to show that a similarity of these marks deceives the customer. The reason for this is that such marks may be used genuinely by the plaintiff as they are suggestive of the nature of the product or is quality. Descriptive marks : The burden in these cases is extremely heavy. The chances of the defendant using such marks to describe his goods bona fide, or that the consumers relate the mark to the product concerned and not its source are extremely high. In such cases, unless the plaintiff shows overriding reasons as to why the mark is associated with him particularly, he will not be granted the right to enforce such a right.
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Gilson, Jerome, trademark Protection and Practice, Vol. 1, 3rd ed., 1997, Matthew Bender & Co., New York, p. 346. 94 White, T. A. & Roein, Jacob, Kurly’s Law of Trademarks and Tradenames, 11th ed., 1983, Sweet and Maxwell, London, p. 213.