Effect of Registration of the parts of the Trademark

This article which deals with the effect of registration of parts of a mark seeks to omit the provision relating to requirement of disclaimer and to explicitly state the general proposition that the registration of a trademark confers exclusive right to the use of the trademark taken as a whole and not separately to each of its constituent parts, if any.

Comments

The provision in section 17 is new and states the effect of registration of parts of a mark under section 15 (1) and states the general proposition that trademark registration confers on the proprietor exclusive right to the use of the trademark taken as whole.

Sub-Section (2) enacts that when a trademark-

• Contains any part, which is not the subject of a separate application by the proprietor for registration as a trademark; or
• Is not separately registered by the proprietor as a trademark; or
• Contains any matter which is common to the trade or is otherwise of a non-distinctive character, registration thereof shall not confer any exclusive right in the matter forming only a part of a whole of the trademark so registered.

Provision for ‘disclaimer’ in old Act deleted

Under section 17 of the replaced Trade and Merchandise Marks Act, 1958, the law provision for a disclaimer of any matter, which was considered non-distinctive. This requirement has been discontinued in the present law, as the disclaimed matter at a particular time may become distinctive through use and disclaimer did not prevent the proprietor in acquiring rights in such matters through registration subsequently without disclaimer. It was also settled law that the trademark should be considered as a whole and the absence of a disclaimer meant that the registration gave no separate rights in matter which only formed part of the trademark.

Registration may be subject to conditions & limitations

The acceptance of an application for registration of a trademark by the Registrar may be either absolute or subject to conditions or limitations, if any, as he may think fit – See section 18(4). Though the Registrar may not require any “disclaimer” as under the old Act, where he considers necessary, he may impose suitable conditions or limitations in public interest. When a trademark contains a device common to trade or is otherwise of a non-distinctive character the law leaves no doubt that the registration does not confer any exclusive right in the matter forming only a part of the trademark. The disclaimer was only for the purposes of the Act. As held by the Supreme Court “it does not affect the rights of the proprietor except such as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trademark do not extend to the parts or matters which he disclaims. That circumstance, however, does not mean that the proprietor’s rights, if any, with respect to those parts or matters would not protect otherwise than under the Act. If the proprietor has acquired any rights by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way”.

Exclusive rights is for use of the mark as a whole

The rights of the registered proprietor are very clearly defined in Section 17(1), which explicitly state that the exclusive right is in respect of the use of the trademark taken as a whole. If the proprietor desires statutory protection to the exclusive use of any part of the trademark, he has to apply to register the whole and each such part as separate trademarks. It is obvious that any part containing a matter, which is common to trade is otherwise of a non-distinctive character will not be allowed registration, unless the applicant is able to adduce evidence of acquired distinctiveness for such part to claim exclusive right. Where a part of a trademark not separately registered is nevertheless itself of a distinctive character, there should be no difficulty for the proprietor to secure a separate registration for such part. The law in section 17 is of course subject to the provisions of section 27(2), which expressly enacts that “nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect of part of a trademark not separately registered.

In Uttam Chemical Udyog versus Shri Rishi Lal Gupta trading as Rishi Soap Works, the registered trademark was “5 Bhai”, wherein numeral “5” had been disclaimed. On an application for rectification, on evidence the Registrar concluded that the word “Bhai” had become publici juris and as such passed an order imposing a disclaimer in respect of the word “Bhai”. On appeal, the High Court held that the registered proprietor’s contention that the numeral 5 having already been disclaimed, imposition of the disclaimer of the word “Bhai” rendered the trademark registration totally ineffective, wes not tenable, as they had still the exclusive right to use the combination of the words “5 Bhai” in relation to the goods. However, they could not restrain others from either using the numeral 5 or the word “Bhai” simpliciter independently or in combination with other words.

In Registrar of Trademarks Versus Ashok Chandra Rakhi Ltd., the Supreme Court observed that “where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trademark to the use of any particular word or name contained therein apart from the mark as a whole”. This decision was followed in Godfrey Phillips India Ltd. Versus Girnar Food and Beverages Pvt. Ltd., where the Apex Court held that the plaintiff could pray for an injunction of passing-off despite a disclaimer. To the same effect is the decision in Charan Das & M/s. Veer Industries (India) versus Bombay Crockery House, where the plaintiff’s mark was ‘PERFECT’ and ‘SWASTIC PERFECT’ and it had disclaimed the word ‘perfect’. In International Foodshiffs Co. LLC versus Parle Products Pvt. Ltd., the Bombay High Court observed that “when a trademark consists of several matters, its trademark registration shall confer on the proprietor exclusive right to the use of the trademark taken as a whole”. The very many differences in color, trade dress, the goods themselves and their pricing should not be ignored because of a phonetic similarity. No laws says that all this must be ignored, or that a solitary test of pronunciation will suffice to defeat all else what weights against. In the instant case, the plaintiffs had sought injunction only on the basis of phonetic similarity and the court ruled that this was not a sufficient warrant for an injunction and hence, the case was dismissed.

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