Madras High Court: Composite Trademark Cannot be Dissected to Infer Infringement
Madras High Court: Composite Trademark Cannot be Dissected to Infer Infringement
The Madras High Court while dismissing a petition has observed that, composite mark cannot be dissected to infer infringement unless any part of such composite mark is either registered as a separate mark or an application with respect to the same is pending for registration.
The single judge Justice C. Saravanan was determining the issue in relation to the interpretation of Section 29 read with Section 17(1) and (2) of the Trade Marks Act, 1999.
The brief background of the case is that a civil suit was filed under provisions of Code of Civil Procedure, 1908 (CPC), Commercial Courts Act, 2015 and Trade Marks Act, 1999 praying for an injunction restraining defendants from infringing the plaintiff’s registered Trade Mark D.R.RAANKA and D.R.
The counsel for the plaintiff submitted that moving an application for registration of trade mark D.R.R., by the defendant, indicated their intention to defeat the present suit and as such, fell within the scope and meaning of Section 29(2)(c) of the Trade Marks Act, 1999. Reliance was placed on PP Jewellers vs. PP Buildwell, (2009), wherein the Court held that letter marks which are a combination of alphabets do not admit easy acceptance as distinctive marks.
Per contra, the counsel for the defendant submitted that as per the anti-dissection rule, one should compare conflicting marks by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. Reliance was placed on the Supreme Court decision in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, (1965) and Delhi High Court decision in Stiefel Laboratories vs. Ajanta Pharma, (2014) in this regard. It was further submitted that the plaintiff had failed to prove that the term ‘DRR’ per se is a dominant feature of their trademark, which is as such necessary for a party claiming infringement of its trade mark.
Further, the present round of litigation was following the earlier suit OS No. 4 of 2018, whereby an ex-parte interim injunction was allowed in favour of the plaintiff.
The following were the issues framed by the Court:
(i) Whether the defendant had infringed the plaintiff’s registered trademark D.R.RAANKA and D.R?
(ii) Whether there was any infringement of plaintiff’s trademark by the defendant?
(iii) Whether the defendant was passing off its goods using the registered trademark of the plaintiff?
(iv) Whether the plaintiff was entitled to the relief of rendition of accounts by the defendant?
(v) Whether the defendant was liable to surrender the stocks of offending labels, name, boards, hoardings, placards, pamphlets, stickers, stationery or any other material bearing the offending mark D.R.R?
With respect to the (i) and (ii) issue, the Court perused Section 29(5) of the Trade Marks, 1999 which deals with the situation which is under contemplation. The Court noted that as per Section Sub clause 5 to Section 29 of the Trade Marks, 1999, a registered trademark is infringed by a person, if he uses such registered trademark, as his trade name, or part of his trade name, or name of his business concern or part of the name of his business concern, dealing in goods or services in respect of which the trademark is registered.
Averting to the present case the Court noted that the expression used was ‘if he uses such registered trade mark.’ The registered word marks of the plaintiff were ‘DR’ and ‘D.R. RAANKA BROS’ and not ‘DRR’. Therefore, the plaintiff cannot claim exclusive rights on the offending English alphabet ‘DRR’ used by the defendant along with ‘Shri Mahalakshmi’ and ‘Velli Malligai.
The Court pertinently clarified that flanking of the English alphabets, ‘DRR’ between ‘Shri Mahalakshmi’ and ‘Velli Malligai’ by the defendant cannot be construed as an infringement of the Trademark (wordmark).
The judge discerned that as per section 17(1) of the Trade Marks Act, 1999, when a trademark consists of several matters, the registration shall confer on the proprietor an exclusive right to use of the trademark taken as a whole. This is the general rule. In other words, where there is a composite registered mark, the composite trademark, must be seen as a whole and should not to be dissected to infer any infringement, opined the judge.
Moreover, the judge highlighted that Section 17(2) of Trade Marks Act, 1999 enables a registered proprietor to claim exclusive right over both whole and part of the composite mark subject to certain conditions.
“In other words, if a registered proprietor of a mark has either filed a separate application for registration of the part of the mark or has a separate registration for the part of the mark separately, then the said proprietor can claim monopoly over the part of the registration,” the Court observed.
Therefore, the Court held that a composite trademark can be said to be infringed, if any part of such composite mark is either:
(a) registered as a separate trademark or;
(b) if an application for registering such part has been filed by the proprietor.
The Court further noted that though the plaintiff and defendants were engaged in the same business, that is the sale of silver articles, by no stretch of imagination can the use of alphabets ‘DRR’ in conjunction with the words ‘Shri Mahalakshmi’ and ‘Velli Maligai’, indicates infringement in the present case.
The judge was of the view, “there is a marked difference in the trading style of the plaintiff and the defendant, although both are engaged in the same trade. There is no scope for any confusion. Therefore, it cannot be said that the attempt of the defendant is to pass-off his goods as that of the plaintiff.”
Consequently, the all issues were answered against the plaintiff and the suit of the plaintiff was dismissed by the Court.
