This article analyzes a recent judgment before the Hon'ble High Court of Delhi,
which addressed the effect of disclaimers attached to an earlier registered
trademark on subsequently associated registered trademarks.
The case involved a dispute between the plaintiff, holding the registration for
"CHINA BISTRO," and the defendant using the trademark "WOW CHINA BITRO."
The defendant argued that disclaimers attached to earlier registered trademarks
also apply to subsequently associated registered trademarks. The court's ruling
clarified the scope of associated trademarks and the applicability of
disclaimers to later trademarks.
When trademarks are associated, it allows for the transfer and assignment of
multiple trademarks as a single unit. This article delves into the legal
implications of disclaimers attached to an earlier registered trademark
concerning subsequently associated registered trademarks, using the recent CHINA
BISTRO case as a reference.
Background of the CHINA BISTRO Case:
The plaintiff, who owned the registered trademark "CHINA BISTRO," filed a suit
against the defendant's use of the trademark "WOW CHINA BITRO." The defendant's
argument centered on the idea that subsequently registered trademarks of the
plaintiff, which were associated with the earlier registered trademarks having
disclaimers, should also be subject to the same disclaimer.
Plaintiff's Clarification on Associated Trademarks:
The plaintiff countered the defendant's argument by referring to Section 44 of
the Trade Marks Act, asserting that associated trademarks are treated as a
single unit only for the purpose of assignment and transmission. Other than that
consideration, each trademark, even if associated with each other, should be
treated as separate trademarks. Thus, the disclaimer attached to trade mark no.
1470912 and 2264846 would not apply to the later trademarks.
Court's Observations and Ruling:
The court carefully examined the arguments presented by both parties. It noted
that no provision was shown indicating that a disclaimer in an earlier
registered trademark would automatically apply to subsequently associated
The court emphasized that if the intent of the registering authority was to
include such disclaimers for later marks, the certificate of registration for
those marks would expressly reflect that.
Based on its interpretation of Section 44 of the Trade Marks Act and considering
the lack of evidence supporting the automatic extension of disclaimers, the
court ruled that the disclaimer in the present case would apply only to the
first two registered trademarks, i.e., trade mark no. 1470912 and 2264846. The
subsequently associated registered trademarks, including "WOW CHINA BITRO,"
would not be subject to the earlier disclaimers.
The Concluding Note:
The CHINA BISTRO case provides valuable insights into the legal aspects of
disclaimers attached to earlier registered trademarks concerning subsequently
associated registered trademarks. The court's ruling clarified that such
disclaimers do not automatically extend to later trademarks, unless expressly
stated in the certificate of registration.
The Concluding Note:
Case Title: Foodlink F and B Holdings India Pvt.Ltd. Vs WOW Momo Foods
Date of Judgement/Order:03.08.2023
Case No. Co Comm (IPD-Pat) 3 of 2021
Neutral Citation: 2023:DHC : 5521
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, H.J.
Information contained herein is being shared in the public Interest. The same
should not be treated as substitute for legal advice as it is subject to my
subjectivity and may contain human errors in perception, interpretation and
presentation of the facts and law involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539