Exclusive rights to use trademark as a whole and not in parts
One of the well-established principles in Trademarks law has been the concept of comparing and considering a trademark in its totality. Many a times a trademark can be a composite trademark having various elements in it, and when the same is registered, the protection is provided to the mark as a whole. But when it comes to claiming rights over the parts of such trademark, the same is dealt as per the provisions of Section 15 & 17 of the Trademarks Act.
Section 15 deals with the registration of parts of trademarks and of trademarks as a series, where a trade mark applied for registration consist of more than one feature, and if the proprietor claims exclusive right of all such features separately, he may have to seek registration for each such part as a separate trademark.
And Section 17 clearly lays down the rights of registered proprietor, which explicitly states that the exclusive right is with respect of the use of the trademark as a whole and not in parts. If the proprietor wishes to seek statutory protection for exclusive use of any part of the trademark, then he has to apply to register that part as a separate trademark.
These general principles have been reiterated by the Indian courts in several precedents and it was the Bombay High Court which recently pronounced a judgment in similar lines on June 10, 2016.
Ultratech Cement Limited and Other vs. Dalmia Cement Bharat Limited
The Plaintiff, Ultratech Cement filed a trademark infringement and passing off case against the Defendants, Dalmia Cement with respect to the Plaintiff’s registered trademark “UltraTech” and the use of the word ‘ULTRA’ by the Defendant in its trade marks.
The Plaintiff company has been using the name UltraTech Cement Limited since October 14, 2004 and are the registered proprietor of several trademarks containing the word “Ultra” such as ‘UltraTech CEMENT The Engineer’s Choice’, ‘UltraTech CONCRETE’, ‘UltraTech READY MIX’, ‘UltraCem’, and a Sun Device followed by ‘UltraTech Cement’, ‘ULTRATECH WHITE CEMENT’.
It was in September 2013 that the Plaintiff learnt about the Defendant’s marks called “Dalmia ULTRA”, “DALMIA ULTRA”, etc. consisting of the word “Ultra” and which is identical and deceptively similar to the ‘UltraTech’ trademarks of the Plaintiff.
The Plaintiff company claimed that the ‘UltraTech’ trademarks have been used by the, openly, continuously, extensively and exclusively in respect of cement and other allied products since 2004 and thus have acquired tremendous goodwill and reputation in India and several other jurisdictions. To this effect, the use of the essential word “Ultra” in the Defendant company’s trademarks has been sought-after with a view to establish a false nexus with the business of the Plaintiff and trade on their reputation and therefore the Defendant’s use of the word “Ultra” amount to infringement as well as passing off their goods as that of the Plaintiffs.
The Defendant company blatantly defended the Plaintiff’s claims on the ground that the Plaintiff’s trademarks contain the word “Ultra” only as one part of the trademarks and that they do not have an exclusive trademark application or registration for the word “Ultra”. The Defendants also contended that their trademarks contain the words “Dalmia” and “Ultra” as a combination and the prominent word “Dalmia” is exclusively and solely associated with the Defendant company ever since its establishment in 1939.
The court rejected the plea of the Plaintiff in the premises that there was no prima facie merit in the Plaintiff’s case of infringement and passing off.
The Court observed that the existence of the word ‘Dalmia’, which is associated with the Defendant company since 1939, as a part of their mark is sufficient to put the traders and purchasing public to notice of the distinctive origin of the Defendant’s goods.
It was also held that the word “Ultra” merely serves as a prefix in the Plaintiff’s UltraTech trademarks and has not been registered as a distinct mark. The court came to this conclusion based on the fact that, in the reply to the objections raised by the Trade Marks Registry on the grounds of descriptive nature of the Plaintiffs’ mark, they replied stating that the word UltraTech has to be viewed in combination and as a whole. And therefore, the court concluded that the registration of the Plaintiff’s UltraTech trademarks was made on the exclusive notion that the word “Ultra” was merely a component of the entire combination and the trademarks ought to be considered as a whole and not in parts.
The judgment typifies a balanced and forthright decision wherein the Court has provided with a fair-reasoned interpretation and reiteration of the concept of considering trademarks as a whole. It has been rightly held that the proprietor gets exclusive right to the use the trademark taken as a whole, and they cannot preclude others from using any part of the trademark independently or in a combination of difference words altogether. As far as claiming rights over any part of such trademark is concerned, the proprietor must apply for registration of such part as separate trademark.