What could be effect of Section 17 of Trademark Act 1999 in relation to
Suit pertaining to infringement of Trademark, if the registered Trademark is a
composite Trademark, comprised of various elements including Word and Device?
The subject matter Suit was filed by the Appellant on the basis of proprietary
rights in the Trademark GOLD WINNER since the year 1999 in relation to their
business of dhall and flour.
They also claimed to be registered proprietor of Trademark GOLD WINNER Label in
class 30. Accordingly the Appellant was claiming statutory as well as common law
rights in relation to Trademark GOLD WINNER Label.
The subject matter Suit was filed by the Appellant against the Respondent on the
ground that Respondent was the subsequent user of trademark GOLD WINNER in
relation to Dhall only since the year 2005.
However the Appellant was not able to succeed in its effort and relief was
declined in the suit by the Ld. Trial Judge. Being aggrieved of the same, the
Appellant filed the subject matter Appeal.
The case of the Respondent was that the same has adopted the Trademark GOLD
WINNER in relation to edible oil in the year 1993.Hence the Respondent was the
prior adopter of Trademark GOLD WINNER.
The Respondent, in the year 2005 extended their business in relation to Dhall as
well and the same being natural business expansion, the Respondent was very much
entitled to do so.
Another defence of the Respondent was that Appellants registered Trademark was
a composite Trademark comprising of word GOLD WINNER, the device of a running
man, the text Trade Mark and Toor dhall and several other elements and
there was no separate registration for the word mark GOLD WINNER.
Hence by virtue of Section 17 of the Trademarks Act 1999, the Appellant could
not have asserted exclusive right over the word GOLD WINNER.
In order to appreciate this argument of the Respondent, Section 17 of the
Trademarks Act 1999 is reproduced as under:
17. Effect Of Registration Of Parts Of A Mark:
- When a trade mark consists of several matters, its registration shall
confer on the proprietor exclusive right to the use of the trade mark taken
as a whole.
- Notwithstanding anything contained in sub-section (1), when a trade
- contains any part:
- which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
- which is not separately registered by the proprietor as a trade mark or
- contains any matter which is common to the trade or is otherwise of a
non-distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the trade
mark so registered.
From perusal of afore mentioned provision, it is apparent that if a registered
is a composite label, the registered Proprietor would get right over the
composite Label as a whole and can not assert exclusive right over any part of
or any element of the composite label.
The Appellant sought to repel this argument by relying upon anti dissection
rule, which provides that while making comparison between the two composite
label trademarks, the essential feature of the Trademark has to be seen and not
any part of it.
However the Honble Division Bench rejected this argument of the Appellant after
observing that in the present case, the Appellant has failed to establish that
the word GOLD WINNER is the most distinctive element of the Appellants
Relief of passing off was also declined on the ground that Respondent has
already developed goodwill and reputation in the market. Because of user of
Respondents there was least possibility of confusion and deception in the
market. Accordingly the Honble Division dismissed the Appeal.
Thus it is apparent that embargo of Section 17 of the Trademarks Act 1999 would
be applicable to a composite Trademark only in case the Registered Proprietor
fails in proving its any element of its composite label to be distinctive, as
has been in the subject matter case.
Case Law Discussed:
S.N.R.Dhall Mill Vs Kaleesuwari Refinary Pvt. Ltd.
Case No. OSA 82 of 2021
High Court of Judicature at Madras
M Duraiswamy and Sunder Mohan , H.J.
Ajay Amitabh Suman,
IPR Advocate, Honble High Court of Delhi