Implications of Disclaimer Conditions attached to multiple Trademark Registrations
Introduction:
In the case of trademark registrations, sometimes disclaimer conditions are attached, limiting the exclusive rights conferred by the registration. This article delves into a recent legal case involving a rectification application filed under Sections 47 and 57 of the Trade Marks Act, 1999, concerning a trademark bearing the term 'KWIK' and the implications of disclaimer conditions attached to multiple trademark registrations.
Background of the Case:
The case revolves around the rectification application filed for the removal/cancellation of the trademark 'POMA-EX-KWIKHEAL' registered under no. 2223608 in the Register of Trade Marks. The respondent obtained registration for 'POMA-EX-KWIKHEAL' on 16th December 2014, with the claimed user from 1st July 2011. The petitioner, claiming ownership of the mark 'FEVIKWIK' under registration no. 465651 dated 6th January 1987 in class-1, contested the registration of 'POMA-EX-KWIKHEAL' on the grounds of similarity.
Court's Observations:
The Hon'ble Court made critical observations regarding the registration of the petitioner's mark 'FEVIKWIK.' It noted that while the petitioner held registrations for 'FEVIKWIK,' 2 registrations, out of 5, included a disclaimer limiting the exclusive use of the term 'KWIK.'
The limitation explicitly stated that the registration of the trademark shall not confer exclusive rights to the word 'KWIK.' Despite variations in the disclaimer's inclusion across registrations, the Registrar imposed this limitation to maintain the integrity of the register.
The court emphasized that the presence of 'KWIK' in the respondent's registered mark 'KWIKHEAL' did not prevent the respondent from asserting commonality in the term 'KWIK.' It highlighted the distinctiveness and dissimilarities between the petitioner's mark and the respondent's device mark, indicating that the petitioner could not claim a monopoly over the term 'KWIK' and its variations.
Court's Decision:
Ultimately, the Hon'ble High Court of Delhi dismissed the rectification petition. It reasoned that the petitioner's statutory right in the registered mark 'FEVIKWIK' did not confer exclusive rights over the term 'KWIK' due to the disclaimer imposed by the Registrar of Trademarks. Since the petitioner lacked exclusive rights over 'KWIK,' it could not seek rectification against 'KWIKHEAL.' Furthermore, the rectification sought pertained to the respondent's device mark, which exhibited distinctive dissimilarities from the petitioner's mark.
Legal Analysis:
The case underscores the significance of disclaimer conditions in multiple trademark registrations. Multiple Disclaimers serve to clarify that certain elements of a mark lack exclusive protection, thereby preventing monopolization of common terms. In this instance, the registrar imposed a disclaimer on the term 'KWIK' in the petitioner's multiple trademarks 'FEVIKWIK.
Trademark law aims to balance the rights of trademark owners with the need to prevent undue monopolization that could stifle competition and innovation. By attaching disclaimer conditions, the registrar ensures that trademarks with common or descriptive elements do not unduly restrict others from using similar terms in their marks.
Conclusion:
The case highlights the complexities surrounding disclaimer conditions in trademark registrations and their impact on subsequent disputes. While trademark owners may hold statutory rights in their registered marks, disclaimer conditions may limit the scope of those rights, particularly concerning common or descriptive terms.
Case Title: Pidilite Industries Limited Vs Sanjay Jain and another
Order Date: 22.03.2024
Case No. C.O. (COMM.IPD-TM) 371/2022
Neutral Citation:2024: DHC: 2369
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Anish Dayal, H.J.
Disclaimer:
This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.
Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Ph No: 9990389539
