Home Intellectual Property Law Section 17 of Trade Marks Act, 1999

Section 17 of Trade Marks Act, 1999

October 28, 2024

106

This article is written by Janvi Badiyani, providing an in-depth examination of Section 17 of the Trade Marks Act, 1999. It offers a detailed analysis of the exclusive rights conferred on composite trade marks and relevant case laws to highlight the practical implications. Additionally, the article draws comparisons between Sections 17 and 15 of the Trade Marks Act, 1999, focussing on their respective roles in trade mark protection.

Table of Contents

Introduction

Trade mark registration is one of the most important branches of the intellectual property rights legislation that gives the owner an exclusive right to use the mark in connection with the goods and services for which it has been registered. The scope of protection can be complicated when a trade mark has several parts, like words, logos, or designs. Section 17 of the Trade Marks Act, 199(hereinafter referred to as TM Act), explains the consequences of registering only specific parts of such trade marks.

This section emphasises that the protection granted under the TM Act covers the entire mark as it is registered. If a trade mark is a composite mark, the rights extend to the mark in its combined form. However, it is essential to note that individual parts of the mark, if not registered separately, may not enjoy the same level of protection as the whole.

Section 17 also provides clarity in legal proceedings involving trade marks. It helps in determining the scope of protection and enforcement, ensuring that the registered trade mark is safeguarded against unauthorised use or infringement in its entirety. This comprehensive protection is crucial for trade mark owners as it maintains the distinctiveness and integrity of their marks in the marketplace.

Section 17 of Trade Marks Act, 1999: Effect of registration of parts of a mark

Protection of the different parts of a trade mark is relative to the part’s distinctiveness and whether they are separately registered or not. Section 17 of the TM Act, which deals with the consequence of registration of parts of a mark, clearly states that the registration of a composite mark gives protection as a whole, but the part of the whole mark is not protected unless it is separately capable of being distinguishable and registered.

This entails that for the protection of each element of a trade mark, the business needs to consider separate registrations separately, even if the business includes logos, slogans and badges, which are both crucial parts of a business. This is important because if the business files for protection of the composite trade mark, the logo and the tagline could be infringed by other companies.

In addition, it is important that enterprises know that mere words and designs that could be deemed obvious might not be protected by trade mark laws independently. However, when combined with other distinctive features, these elements can collectively create a unique composite mark, making it difficult for competitors to infringe upon it. Clause-wise explanation of Section 17

Section 17 of the TM Act deals with the impact of the registration of a trade mark, which includes various compartments. This section is crucial to consider to know to what extent a composite trade mark will be protected, that it can comprise words, design, logo or any other graphic distinctive sign. The following is a clause-wise analysis of Section 17.

Section 17(1) states that the rights given to trade marks must be protected from unauthorised use by others. As is the case in most countries around the world, these protections are essential. Section 17(1) of the TM Act gives the owner of a trade mark, composed of multiple elements, exclusive rights to its use. When a trade mark is registered, it protects the entire mark, including all its parts, such as the brand name, logo, or colours, rather than protecting each part separately. The main implication of these provisions is that the whole trade mark is protected from infringement by third parties through the exclusive right to use the mark.

This section is especially important for composite trade marks, which include several components that, when combined, make the trade mark. The registration of a composite mark means that it is prohibited that rivals employ a sign that is either similar to or the same as the mark registered under this act. The elaborate safeguarding approach ensures that any aspect of the mark cannot be used in a manner that creates confusion for consumers, thus protecting the uniqueness and prestige of the trade mark.

Legal redress can be sought against any third party that employs a mark that is similar to the whole registered trade mark by the owner of the composite trade mark. Justification for this protection is the need to maintain the brand’s credibility and prevent customers from being misled. Here, the court will consider the likelihood of confusion in the marketplace while assessing a mark’s similarity. The origin of the trade mark is protected, and competitors are prevented from using or diminishing its value under the protection provided by Section 17(1).

Section 17(2) provides special statuses for segments of the mark. This imposes significant limitations on the protective privileges, which a proprietor can exercise over parts of a compound mark. This provision aims to explain that if a trade mark includes several characteristics, only some of them are protected individually, and only these elements can have exclusive rights.

If a trade mark includes elements that are not individually registered, the owner cannot claim exclusive rights over those specific parts. Additionally, if the elements are generic or commonly used in the trade, the registration does not grant ownership rights over each individual component.

For instance, if a trade mark incorporates a figure as a logo and the name of a product as a word, then the word itself isn’t protected unless it is separately registered. This just goes to highlight the need for owners of composite trade marks to seek to register every part of the trade mark in order to gain wider legal protection.

Practical examples and application

Composite mark: It is a mark that combines words, numerals or any symbols with a figurative or literary device. For instance, a company wants to register a trade mark with the brand name ‘Fresh Fruit’ in which an apple along with the formation of a leaf has been illustrated. In particular, referring to Section 17(1), the company has the absolute rights to the whole trade mark.

As per Section 17(2), if a phrase like “Fresh Fruit” isn’t registered on its own, the trade mark owner can’t stop others from using it. Similarly, if the Parle logo was commonly used in the biscuit industry, Parle couldn’t claim exclusive rights unless it was distinctly registered.

Application in legal disputes: In legal disputes involving trade mark infringement, courts often assess the composite mark as a whole to determine whether there is a likelihood of confusion with another mark. This is crucial because even if the defendant uses only part of a registered trade mark, such as certain graphic or literal elements, it may not always amount to infringement. If those elements are common or generic within the industry, the court might conclude that there is no violation of the exclusive rights of the trade mark owner.

For instance, if the alleged infringing mark contains elements like shapes, colours, or phrases that are widely used by other businesses in the same field, the court may determine that those features cannot be exclusively protected by the original trade mark. Thus, partial use of a registered mark does not necessarily result in infringement unless it creates confusion or misleads consumers about the source of the goods or services. This approach maintains a balance between protecting trade mark owners’ rights and ensuring fair competition.

Implications and practical applications of Section 17 of Trade Marks Act, 1999

Section 17 of the Trade Marks Act, 1999 is highly effective to minimise confusion when dealing with complex or composite trade marks including words, logos, symbols, colours and taglines. As provided by Section 17, where a composite trade mark is registered, protection is afforded to the whole mark as one whole. Nonetheless, individual components of the mark are not protected unless they are distinguishable separately and the mark is separately registered.

This is especially the case with multimedia trade marks and now almost any modern branding, when companies use complex compositions of visual, text, and design elements. Section 17 creates a protection against the attempts of brand owners to monopolise some aspects of the product and prevent others from using similar elements, stating that they have to register every separate component. For instance, where a brand employs a logo and a slogan as constituent parts of a compound trade mark, one has to apply for registration of each part as a separate part so as to have legal recourse in their protection.

Other authorities have since reinforced the meanings of Section 17 as necessitated by new case law. The courts have firmly held an opinion that although registration of a composite trade mark gives a wide coverage, the limits of this protection do not include the non-distinctive or any unregistered portion of the mark. The trade mark owner must prove that its elements, like words, phrases, or symbols, have gained distinctiveness through use to qualify for separate registration and protection.

Comprehensive protection of Section 17 in trade mark law

For trade mark proprietors aiming for comprehensive protection of both a composite mark and its individual elements, the key legal provision is found under the Trade Marks Act. In the case of the composite trade mark, each of its components cannot be prevented unless, in its separate state, it takes a different form and is registered individually. This is important, especially for firms that employ multi-element trade marks consisting of logos, catchphrases, and colour combinations, among others, to create brand awareness. Yet, protection of these individual elements is subject to compliance with specific criteria for distinctiveness and separate registration.

Section 17 has practical applications for trade mark projection. For example, a business can register a trade mark that includes memorable graphic and informative slogans. While the company has exclusive rights to the combined mark, competitors could still use a similar descriptive tagline unless that tagline is separately registered and has gained secondary meaning.

Parts of a trade mark

A trade mark is valuable not only because it helps the public to easily distinguish a company’s products or services from those of competitors, but also because each individual component of the trade mark contributes to its uniqueness. The distinctiveness of these components enhances the overall value and recognition of the brand. This distinctive sign of a company may consist of words or logos, colours, shapes and sounds, and all these elements form the part of the trade mark. It is therefore very important to understand the role and the extent of protection that these individual parts will receive as one formulates their trade mark and legal policy.

Word marks: The most basic form of a trade mark is the word mark. This often encompasses the brand name or a popular tagline connected to a product or a service being advertised. Word marks are potent because, through the word, consumers are able to comprehend, recall, and identify with the mark.

A trade mark is more than just a name or logo; it represents a brand identity. Famous trade marks like Coca-Cola, Apple, or Nike have become synonymous with companies themselves. Word marks can be categorised based on how distinctive they are.

Arbitrary or fanciful marks: Both marks are unique trade marks that have no direct connection to the goods or services they represent. For example, “Apple” for computers and “Kodak” for cameras. Arbitrary marks use common words in unrelated contexts, while fanciful marks are entirely invented or made-up words. Both types are highly distinctive and offer strong protection under trade mark law.
Suggestive marks: marks suggest what sort of product or service is being promoted without announcing what it is. Unlike logo marks, these marks cannot be recognised easily without some level of thinking from the consumer linking the name to the particular product. For instance, although the term Netflix is an Internet-based service that broadcasts movies and shows, the term streaming is not connected to Netflix. Suggestive marks are identifiable and relevant enough as trade marks as they refer to an idea connected with commerce.
Descriptive marks: These marks identify or describe the characteristic of a product or a service and, in general, cannot be protected; this is the case only if it has become distinctive through use (e.g., Best Buy for an electronics retailer).
Generic Marks: Refer to general terms that describe the product or service being offered, making them ineligible for trade mark protection. For example, the term “computer” cannot be trade marked when used to brand a line of computers.

Logos and graphic elements: Logos can also go hand in hand with the concept of a trade mark. A logo is a graphic symbol or an emblem that is put to represent a brand integrated with a wordmark at the time of its use. Icons are important for visual differentiation, over time, ideas can evolve into iconic brand logos. For example, the TATA logo features a stylised “T,” Amul’s logo includes a red bold font, and Amul Girl is some of the most recognised logos worldwide. Logos can be categorised as follows:

Abstract : These logos incorporate graphics that are not related to the product but have been linked to it in one way or another (example: Nike’s running symbol).
Literal: These logos depict objects that are related to the product or service being sold (such as a picture of a camera for a photography and videography service).
Combination marks: These logos contain both word marks and graphic designs, and these offer total brand identity (for instance, the Starbucks logo with the mermaid figure alongside the brand name).

Colour schemes: Colours can play a role in branding and may become part of a trade mark when used consistently over time. When a combination of colours is employed in the marketing strategies or the product label and outermost packaging, then a distinctive trait of the brand emerges.

However, to register a colour mark is not an easy task for the brand owner because the brand owner has to demonstrate to an examiner that the colour has been associated with his product in the market. For instance, the purple colour used in Cadbury Dairy Milk is an identifiable trade mark in India.

Likewise, for the Asian Paints brand, this company relies on its staff to brand a particular colour, which has been a representation of the corporation in the paint industry. These colour marks have become descriptive but have assumed secondary meaning, meaning they can be protected trade marks.

It will also be important to note that colour marks are generally protected under the specific reference to the particular goods or services associated with the mark. For instance, Cadbury has sought to protect its shape and colour, a purple colour used in packing Cadbury chocolates, as a colour trade mark, which has attracted legal controversies as to whether colours can be regarded as trade marks.

Shapes and packaging (trade dress): Trade dress, namely, the outer appearance of a product or its container, can also be protected by a trade mark as long as such appearance is in the form of a shape that will not perform the product’s practical function. Trade dress is the term used to describe the appearance of a product and its immediate environment or container that a consumer is likely to associate with its producer.

The ones popular in India include Parachute coconut oil, which is packed in a blue tub, Bisleri water, packed in its own designed bottle; and Maggie packets’ colour combination-here, the red and yellow colour. Such images give the brand a clear visual affiliation of the product, the same way we see the Coke bottle shape or the emblematic shape of the Toblerone chocolate triangle.

For a shape or packaging to be protected by a trade mark, it must be distinctive as well as being a source identifier to users. It cannot be functional; that is, the shape or packing cannot be prerequisite to the functionality or use of the product, nor does it influence the price or quality of the product.

Sound marks: It is a less common but increasingly recognised type of trade mark. These are sounds tied to a brand or product, making them easily recognisable by consumers, like the jingling sound of the Titan wristwatch or the sound associated with HDFC Bank’s promotional advertisements. A sound mark must be distinctive and should not confuse consumers regarding the goods or services it represents

Sound marks are mostly registered in associations with words that describe sound, and this is normally accompanied by a graphical note (for example, music notation). The distinctiveness and connection between the sound and a product or a service is vital for getting trade mark protection.

Slogans: Slogans or taglines are short, catchy phrases, typically under a minimum number of words, created by a brand to convey its message. A slogan is an important part of a trade mark because it captures the brand’s identity or promise in just a few words. Examples include Tata Tea: “Jaago Re!” and MTR Foods: “Taste of Tradition,” all of which are registered trade marks.

It should be noted that trade marks, including slogans, must not be descriptive in order to be protected. They should not claim a common phrase used in the industry unless it has gained a unique meaning through widespread use over time.

Other non-traditional marks: Other than the above non-traditional elements of trade marks, there are smell marks, texture marks, and even motion marks. Such trade marks remain rather limited at present and may be difficult to obtain because, as mentioned above, the distinctiveness of slogans has to be proven according to strict criteria.

Smell marks: A smell characteristic of a product may be trade marked if it satisfies the two main qualifications of non-functionality and distinctiveness.
Texture marks: It refers to a trade mark that protects the distinct tactile feel of a product In India, currently, there is no registry for texture marks in the Indian trade mark system.
Motion marks: Motion marks are trade marks that incorporate moving elements, like the animated logo of Viacom 18.

Registration of parts of a trade mark

This means that at least a certain segment of a trade mark is registered separately to the other segments and/or with the other parts. This is applicable where there is the question as to whether an application for registration of a trade mark in its entirety is possible under Section 17 of the TM Act.

Composite mark : The trade mark that may be composite is actually a combination of word, logo, colour and design. Registration means that the mark is registered cumulatively as an entire entity; this means that the protection is accorded to the entire mark as a whole unit.

Effect of registration of parts

It is mentioned in the provisions of Section 17 of the TM Act that when the trade mark has been registered and it has more than one part, then the owner of such a registered trade mark does not have exclusive rights over the part thereof even when it is distinct unless and until it is registered otherwise. Therefore, in most cases, the above-mentioned exclusive right only applies where the combination as registered is involved.

Advantages of registering parts separately

This measure can be explained by the following benefits of registering the parts separately:

Greater protection: The trade mark owner can strengthen their protection by registering each part of the trade mark separately, including the term, logo, and even the slogan. Thus, the owner can protect themselves from competitors using the same elements, even if those elements may not represent the full brand name.
Flexibility in use: This means that having a trade mark registered in different parts gives more freedom in using certain elements. It can also prevent ownership claims on basic parts of the original trade mark. For example, a company can change or shorten its name or logo while still keeping the word mark.
Protection against imitation: Still, the rivals can attempt to use the individual parts of a popular composite mark. These issues can be avoided by registering each part separately.
Judicial interpretation: Courts interpret this section to mean that if protection is sought for individual parts of a composite trade mark, each part must be registered separately. The Indian Supreme Court has reaffirmed this in its various decisions and stated clearly that protection for part of the trade mark can only be sought if that part has been separately registered.

Case example: In S. Syed Mohideen vs. P. Sulochana Bai (2013), the Supreme Court of India clarified that a composite trade mark’s registration does not grant separate protection for any specific part unless each part is individually registered
Implications for trade mark strategy: There is an important issue that has emerged for companies to consider whether they should register the separate parts of a composite mark. This can be important to brands where certain individual brand elements may possess value in their own right.

While only registering the combination of features assures the registration of the appearance of the product and protection of the product, the option of registering each component separately is beneficial as it grants broader and more versatile legal protection. This can be significantly relevant for the preservation of a brand’s identity and its market worth, especially for the fields that suffer from blatant imitation and the power of advertising.

Interplay between Section 15 and Section 17

Section 15 and Section 17 of the TM Act are incorporated in many other facts regarding trade mark registration and the extent of the rights conferred on composite trade marks and their constituent parts. When a trade mark is registered, it is considered as a whole. Under Section 17 of the TM Act, if a trader wants exclusive rights to their trade mark, each distinct part of that trade mark must be registered separately.

Section 15 explains the impact of registering a composite mark. This means the different components of a trade mark can be protected individually. Taken together, all of these parts give an adequate direction in regard to specifying rights that are granted with registration as well as in regards to how protection might be given to certain components of a composite mark.

As explained in Section 15, for composite marks, the owner must apply for separate trade mark registration for each distinct feature that forms part of the mark. If this is not done, even if the trade mark as a whole is registered, the owner cannot assert exclusive rights over any individual component unless it has been separately registered.

Section 17 indicates that registering a trade mark in its entirety protects the composite mark as a whole but does not extend protection to any individual parts unless they have acquired distinctiveness or are registered separately. According to this Section, protection is afforded to the whole of the trade mark, and hence, any weak or mere directory element that constitutes the composite mark cannot be protected unless such element is registered otherwise under Section 15.

In trade mark strategy. Section 15 allows for the separate registration of components of a composite mark to ensure full protection. Meanwhile, Section 17 states that if the non-distinctive or common parts are not registered separately, the exclusive rights of the composite mark will not cover those ordinary parts.

This interaction demonstrates why it is so important to consider whether certain elements of a trade mark ought to be registered in isolation to ensure that the legal strength and effectiveness of any enforcement strategy are maximised.

Aspect	Section 15	Section 17
Primary focus	Provides for the option to register parts of a composite trade mark separately.	Addresses the effect of registering a composite trade mark as a whole.
Registration scope	Allows for the registration of individual elements of a composite mark.	Confers rights on the entire composite mark, not its unregistered parts.
Exclusive rights	Grants exclusive rights to each separately registered part.	Limits exclusive rights to the whole mark unless parts are separately registered.
Application of rights	Rights can be enforced independently for each registered element.	Rights apply to the overall impression of the composite mark, not its parts.
Protection of non-distinctive parts	Enables protection if the parts are registered separately.	No exclusive rights over non-distinctive or common elements unless registered.
Strategic importance	Essential for securing broad protection of key brand elements.	Highlights the necessity of registering important elements individually.
Legal enforcement	Easier to enforce rights against infringement of individual parts.	Infringement cases focus on the composite mark as a whole.

Anti-dissection Rule

The anti-dissection rule, which is based on Sections 15 and 17 of The TM Act, emphasises evaluating a trade mark as a whole rather than breaking it down into individual parts.

Section 15 deals with the registration of parts of trade marks and trade marks as a series. It allows a trade mark owner to register the whole trade mark and its individual parts separately if they claim exclusive rights to those parts. Each part must meet the conditions of an independent trade mark.

Section 17 focuses on the effect of registering parts of a trade mark. It states that when a trade mark includes multiple elements, the owner gets the exclusive right to use the entire trade mark as a whole. If any part of the trade mark is not separately registered or if it contains common or non-distinctive elements, the owner does not get exclusive rights to those individual parts.

The anti-dissection rule means that when comparing two trade marks, we should look at them in their entirety rather than dissecting them into individual components. This approach is based on the idea that consumers with average intelligence and imperfect memory perceive the overall impression of a trade mark, not its individual parts. Therefore, conflicting trade marks must be compared as a whole to determine if they are deceptively similar.

In the case of Gtz India Pvt. Ltd. vs. Artek Surfins Chemicals Ltd. & Anr.(2024), the court applied the anti-dissection rule. They compared the trade marks of Gtz India Pvt. Ltd. and Artek Surfins Chemicals Ltd. as complete entities. The court emphasised that consumers would not analyse each component of the trade marks separately. Instead, they would perceive the overall look, sound, and structure of the trade marks, thus determining whether the trade marks were deceptively similar in their entirety.

Validity of Section 17 of Trade Marks Act, 1999

Section 17 of the Trade Marks Act, 1999, plays a critical role in regulating composite trade marks, which consist of multiple components such as words, logos, or symbols. The main purpose of this section is to protect the whole of the trade mark. It does not allow one degree of protection to each individual element, except where those components are separately registered or have gained secondary meaning over time.

The validity of Section 17 lies in its ability to prevent the monopolisation of generic or descriptive elements of a composite trade mark. It ensures that trade mark owners do not gain unfair advantages by claiming exclusive rights over common terms or symbols that should be available for use by all competitors in the marketplace.

Additionally, Section 17 helps trade mark owners by allowing them to file for protection of each component of the trade mark separately, ensuring that as many aspects as possible are safeguarded. It also enables third parties to use parts of a mark that are not significantly unique or important. The general objectives of Section 17 include safeguarding trade marks, preventing confusion, and encouraging fair competition and innovation in the market.

The need for Section 17 also arises from the public interest, which may not allow trade mark owners to be granted broad rights, as is evident from some of the recent court precedents. Section 17 in the same respect grants protection for trade mark owners while placing other aspects within the business’s commerce available for use by others. It provides much needed clarity on the scope of trade mark protection with regard to composite marks.

Relevant case laws

United Biotech Pvt. Ltd. vs. Orchid Chemicals & Pharmaceuticals Ltd. (2012)

Facts

In this case, United Biotech Pvt. Ltd. vs. Orchid Chemicals & Pharmaceuticals on (18 May, 2012) United Biotech Pvt. Ltd. filed a trade mark infringement suit against Orchid Chemicals & Pharmaceuticals Ltd. The dispute was regarding the use of the trade mark “FORZID,” which was registered by United Biotech. Orchid Chemicals & Pharmaceuticals had launched a product under the brand name “ORZID,” which United Biotech claimed was deceptively similar to their trade mark, “FORZID.” United Biotech argued that the similarity between the two names could cause confusion among consumers, leading them to believe that the two products were related.

Issue

Whether the use of the trade mark “ORZID” by Orchid Chemicals constitutes infringement of United Biotech’s registered trade mark “FORZID” under the Trade Marks Act, 1999.
Whether Orchid Chemicals was passing off their product as that of United Biotech’s by using a deceptively similar mark.

Judgement

The court considered that the trade marks “FORZID” and “ORZID” were confusingly similar due to their deceptively similar appearance, and incredibly both trade marks belong to pharmaceutical products, so this factor increases consumer confusion. Therefore, the court provided an order to prevent Orchid Chemical from using the trade mark known as “ORZID.”

This case falls under Section 17 of the Trade Marks Act, 1999, which states that a registered trade mark as a matter of law shall comprise of the whole of the mark and none of its part, unless such part is registered. Overall, the court did not go by each letter or part of the trade marks but saw the trade marks as a whole in order not to cause confusion between more than two or confusingly similar marks.

Ultratech Cement Limited and Ors. vs. Dalmia Cement Bharat Limited, (2016)

Facts

In the case of Ultratech Cement Limited And 1 Ors vs Dalmia Cement Bharat Limited on (10 June, 2016)Ultratech Cement Limited and Grasim Industries Limited (Plaintiffs) filed a suit against Dalmia Cement Bharat Limited (Defendant) for trademark infringement and passing off. The plaintiffs claimed that the defendant’s use of the word ‘Ultra’ in their trademarks ‘Dalmia ULTRA’ and ‘DALMIA ULTRA’ was an infringement of the plaintiffs’ registered trademarks containing the word ‘UltraTech’. The plaintiffs alleged that the use of ‘Ultra’ by the defendant would likely cause confusion among consumers and damage the plaintiffs’ goodwill.

Issues

Whether the use of the word ‘Ultra’ by the defendant in their trademarks constituted an infringement of the plaintiffs’ registered trademarks containing ‘UltraTech’.
Whether the defendant’s use of the word ‘Ultra’ amounted to passing off their goods as those of the plaintiffs.

Judgment

The court examined the facts and arguments presented by both parties. It found that the word ‘Ultra’ is a common descriptive term and not distinctive enough to warrant exclusive use by the plaintiffs. The plaintiffs’ trademarks are device/label marks containing ‘UltraTech’ as a whole, and the word ‘Ultra’ is not used independently. The court noted that the defendant’s use of ‘Dalmia ULTRA’ does not create a likelihood of confusion among consumers due to the prominence of the word ‘Dalmia’ which has been associated with the defendant for many years. Consequently, the court held that there was no prima facie case of trademark infringement or passing off by the defendant. The plaintiffs’ Notices of Motion were dismissed with no order as to costs.

Cadbury India Limited and Ors. vs. Neeraj Food Products (2007)

Facts

In the case of Cadbury India Limited And Ors. vs. Neeraj Food Products on (25 May, 2007) Cadbury India Limited and others (plaintiffs) filed a suit against Neeraj Food Products (defendant) on or about August 24, 2005. The plaintiffs claimed that the defendant had introduced chocolate products in the market with packaging that closely imitated the plaintiffs’ distinctive pillow packs. The defendant used the trademark ‘JAMES BOND’, which was phonetically and visually similar to the plaintiffs’ registered trademark ‘GEMS’. The plaintiffs argued that this similarity was likely to cause confusion and deception among consumers, constituting an infringement of their trademark and passing off the defendant’s goods as those of the plaintiffs.

Issues

Whether the defendant’s use of the trademark ‘JAMES BOND’ constituted an infringement of the plaintiffs’ registered trademark ‘GEMS’.
Whether the defendant’s packaging imitated the plaintiffs’ distinctive pillow packs to the extent that it amounted to passing off.
Whether the phonetic similarity between ‘GEMS’ and ‘JAMES’ would cause confusion among the purchasing public

Judgement

The court found that the plaintiffs had established a strong case for trademark infringement and passing off. The defendant’s pillow packs were nearly identical to those of the plaintiffs, including size, background colour, and visual impression of multicoloured chocolate tablets, differing only in the trademarks ‘GEMS’ and ‘JAMES BOND’. The phonetic similarity between ‘GEMS’ and ‘JAMES’ was likely to cause consumer confusion.

The court held that the plaintiffs’ extensive use and promotion of ‘GEMS’ had acquired significant goodwill and that the defendant’s use of similar packaging and ‘JAMES BOND’ was a dishonest attempt to benefit from the plaintiffs’ market presence.

The court concluded that the plaintiffs had made a prima facie case for trademark infringement, passing off, and copyright violation. The defendant was restrained from using the ‘JAMES BOND’ trademark and similar packaging, and an interlocutory injunction was granted to the plaintiffs.

Conclusion

Section 17 of the TM Act, 1999, deals with the registration of parts of a trade mark. It states that when a trade mark includes multiple elements, the registration gives the owner exclusive rights to use the trade mark as a whole. However, if any part of the trade mark is not separately applied for or registered, or if it includes common or non-distinctive elements, the registration does not grant exclusive rights to those individual parts.

It also assists in ascertaining the level of protection of composite trade marks, and hence, when conducting its analysis, it should receive thorough consideration. That way, the employment of the mark ensures that the registered owner cannot have exclusive claims of the components individualistic of the mark until the components of the individual trade marks are also registered. To put it in different terms, if several rights have not been granted, identification is per se accurate, and violation cannot be grounded upon components of the mark.

Examples of which are the several juridical methods that show that even where a composite mark has been registered as a whole, any portion thereof constituting a material part of the said whole and used by any individual or party without authorisation and which may create confusion or deception on the part of the public is a violation. However, in the case the owner wants maximum protection, it is explained in Section 17 how it is advisable to register each piece individually.

The TM Act regulates the rights that are given to the owners of trade marks with regards to composite marks, and it also makes certain that they get further protection in as much as they cannot register certain items in particular unless they want protection. This in turn helps companies to register the trade mark comprehensively with the aim of making sure that brands are sufficiently protected once outside the market.

Frequently Asked Questions (FAQs)

What other gains are there for the businesses other than registration of composite trade marks?

For further enhanced protection, the basic components of the composite marks, which may include logos or certain words, may be registered separately. To improve the legal protection, one is advised to register the parts of the mark separately and not the overall mark.

How can we tell if a change can be made at our discretion?

While changing any part of a composite trade mark, the original mark stays valid and protected as long as it does not change. However, the new mark can only be protected if it is registered. This means that if an important change is made, we need to submit a new application to protect the updated version.

Whether registration of a composite mark can effectively guard against passing off the product on which such mark is used?

In fact, passing off is provided by a single registration of a trade mark on the basis of its composition from one product to another single product. Nevertheless, in the majority of instances, the notions of reputation and goodwill are deemed. As for passing off claims, there are a few principles that have to be considered. It is here, however, where courts are most admittedly likely to determine that the use of any part of it is likely to cause confusion to the public even where the registration is helpful.

What happens, for example, when a person or organisation uses a part of my composite trade mark?

Where such excerpts result in confusion among consumers or where the user’s intention is to cause confusion and where the composite trade mark is either famous or distinctive, you may have a cause of action for infringement. Although, in case each portion is registered separately, then it proves convenient to secure rights over certain parts of the work. Each case is thus a special one, and therefore the court will determine whether or not a usage is an infringement or not.

Can I submit a claim that merely the component of a logo that I created comprises my whole trade mark logo?

However, as observed, without the separate registration of elements, one cannot track the option of asserting the proprietary of a particular section of a composite trade mark as in the result of the application. This is what Section 17 does; it expands protection of all the fields of the trade mark as registered without having to pinpoint the aspects that need such protection.

References

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.

LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:

https://t.me/lawyerscommunity

Section 17 of Trade Marks Act, 1999

Introduction