Order Date:26.07.2022
Case No. OSA 82 of 2021
High Court of Judicature at Madras
M Duraiswamy and Sunder Mohan , H.J.
S.N.R.Dhall Mill Vs Kaleesuwari Refinary Pvt.Ltd.
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 Appellant's 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:
(1) 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.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark:
(a) contains any part:
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark or
(b) 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 Hon'ble 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 Appellant's Trademark.
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 Hon'ble 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.
Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539
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