A registered trademark provides the exclusive rights to use a trademark against others. The rights provided under the Act come with a condition that it should be safeguarded in the form in which it is applied and registered. In case of a composite trademark, which has various distinctive and non-distinctive elements, the right to take action against an infringer is limited to the extent that the distinctive part of the trademark is misused by the infringer.Therefore, the questions to be answered here are, what happen when a part of trademark is misused? and how the proprietor can take action against the infringer?.
PARTS OF TRADEMARKS
A trademark at various occasions is a composite trademark having various elements in it, when the same is registered under the law, then protection is provided to the mark as a whole but when it comes to claiming the right over the part of trademark the same is dealt as per the provisions of Sec.15 & Sec.17 of the trademarks act.
Section 15 under Trademark Act 1999 covers the registration of parts of trademarks and of trademarks as a series, where a trade mark applied for registration consist of more than one feature, and if the proprietor claims exclusive right of all such features separately, he may have to seek registration for each such part as a separate trademark.
Sub-section (2) states that each such separate trademark shall fulfill all the conditions of an independent trademark and shall be examined independently to determine whether it can be registered or not and will be subject to all the subsequent procedures.
As said by Lord Esher in Pinto v. Badman (8 R.P.C. 181):
"The truth is that the label does not consist of each particular part of it, but consists of the combination of them all."
In the case of Three-N-Products Private Limited Vs. Emami Limited2 it was observed by the learned single judge that "the registration thereof shall not confer any exclusive right" appearing towards the end of Section 17 (2) have to be understood in the context and the import of such word is that the registration of the composite mark will not by itself confer any exclusive right as to the part of the composite mark.
Section 17 states the effect of registration of parts of a mark and states the general proposition that registration confers on the proprietor exclusive right to the use of the trademark taken 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 as a whole. If the proprietor desires statutory protection to the exclusive use of any part of the trademark, then he has to apply to register that part as a separate trademark. Further it is clear, that any part of the trademark containing a matter which is common to the trade or is of non-distinctive character will not be allowed registration. Whereas, if the applicant of the trade mark is able to adduce evidence of acquired distinctiveness for such part, he may then rightly claim exclusive right for the part of the trade mark, but if the part of the trade mark has not been separately registered and is nevertheless itself of a distinctive character,there should be no difficulty for the proprietor to secure a separate registration for such part.
In the case of Uttam Chemical Udyog v. Shri Rishi Lal Gupta3, the registered trade mark was “5-Bhai”, wherein numeral “5” had been disclaimed. The registrar further 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 they had the exclusive right to use the combination of the words “5-Bhai” in relation to the goods, but however, they could not restrain others from either using the numeral 5 or the word “Bhai” independently or in combination with other words.
In the case of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd4., the apex court observed “It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole.”
As held by the apex court “That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. In short, the disclaimed parts or matters are not within the protection of the statute”.
In the case of Charan Das & Veer Industries (India) v. M/s. Bombay Crockery House5., where the plaintiff’s mark was ‘PERFECT’ and ‘SWASTIC PERFECT’ and it had disclaimed the word ‘Perfect’.
After the amendment of the Trademarks Act in 1999, section 17 seeks to omit the provision relating to requirement of disclaimer. This requirement has been discontinued now as under the present law the disclaimed matter at a particular time may become distinctive if the proprietor acquires any right by long use of those parts or matters in relation to his trade, he may, on proof of the necessary facts, claim his rights by a passing off action.
The scope and effect of disclaimer has been explained by the apex court in the case of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd (Supra)
"The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade mark. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such as arise out of registration.”
Therefore it’s a well settled law that the trademark should be considered as a whole and the absence of the disclaimer after the amendment meant that the registration gave no separate rights in matter which only formed part of the trade mark.
Referring to the above provisions of the act,it is a settled law that the proprietor gets exclusive right to the use the trademark taken as a whole. He has to apply to register the whole and each such part as separate trademarks in order to claim right over any part of the mark, also they cannot restrain others from either using any part or word independently or in combination with other words. But if the proprietor acquires any right by long use of those parts or words in relation to his trade, he may, claim his right by a passing off action and prevent exploitation of his mark.