Introduction
Registration of a trademark bestows the exclusive right to the owner to use the mark in connection with the goods and services, demonstrates the crucial part of the intellectual property rights. These rights are safeguarded in accordance with the statutory law. The scope of protection differs and becomes complicated for taking action against the infringer, in the case of composite mark i.e. when a trademark has a numerous distinctive and non-distinctive elements inclusive of words, logos or any certain kind of design or symbols. The Trade Marks Act, 1999 (hereinafter referred to as Act) by the virtue of Section 17, explains the consequences of registering only specific parts of such trademarks. This section highlights that the protection under the Act is granted to the entire mark as it is registered and in order to deal with composite mark, the rights are extended combined form of the trademark. However, it is imperatively notable thatthat if the mark is not registered separately, its individual components might not have the same level of protection as the entire mark.
Relevant Statutory Provisions
Section 15 of the Trademark Act, 1999 deals with the trademarks entailing numerous features applied for the registration for the parts of trademarks and of trademarks as a series. This section provides that in case the proprietor claims exclusive right for all the features of trademark separately, he perhaps has to seek registration for each such part as a separate trademark.
Sub-section (2) of Section 15 of the Act enunciates that all the conditions of an independent trademark are required to be satisfied for each separate trademark and shall be examined independently for proceeding with the registration and will be subject to all the subsequent procedures.
Section 17 of the Act puts forth the explanation of effect of the registration of parts of the mark and 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. Therefore, statutory protection for exclusive use of any part of the trademark requires registration of that part as a separate trademark.
However, no registration would be allowed, if there's a presence of part of the trademark which is common in trade or consists of non-distinctive character. Although, if evidences can be adduced for the acquired distinctiveness for such part by the applicant of the trade mark, exclusive rights for that part can be rightly claimed.
Anti-Dissection Rule
The basis of the Anti-Dissection Rule relies on Section 15 and Section 17 of the Trade Marks Act, 1999, puts emphasis on assessing the mark as a whole rather than a putting dominance on a certain portion of it. This rule has also been highlighted and explained by the renowned trademark expert McCarthy highlights the rationale behind this rule and asserted that "the trademarks should be assessed based on their commercial impression on consumers. Ordinary consumers don't retain information about separate elements; they perceive the trademark as a unified whole." Consequently, the mark generally is to be assessed as a whole and not the particular part of it unless these parts of the mark are registered separately.
Observation of the Court
In this case, United Biotech Pvt. Ltd. vs. Orchid Chemicals & Pharmaceuticals 2012 (50) PTC 433 (Del.) (DB)The Hon'ble Court held that the mark ORZID is confusingly similar to the mark ORZID and therefore, the court provided an order to prevent Orchid Chemical from using the trade mark known as "ORZID." Further, Court stated that "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 trademarks as a whole in order not to cause confusion between more than two or confusingly similar marks."
Conclusion
To sum up, Section 17 of the Trade Marks Act, 1999 encapsulates a delicate balance between safeguarding the proprietary rights of trademark owner and preventing monopolization of common elements. By emphasizing the holistic evaluation of composite marks, the provision aligns with broader objective of trademark to protect brand identity, promote fair competition and prevent consumer deception. Hence, it is a settled law that the proprietor gets exclusive right to the use the trademark taken as a whole. In order to claim exclusive rights over the parts of trademark, each such part is required to entail a separate trademark.
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