Author: Former Intern - Jahnvi Sharma
Section 17(2)(b)  of the Trade Marks Act, 1999 states that “when a trademark 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”. This section prescribes that a trademark must be viewed as an indivisible whole. The fundamental questions which arise are: whether a proprietor can claim an exclusive right in the dominant part of the whole of the trademark? and whether a composite trademark can be dissected into its constituent elements for determining infringement?
The Anti-Dissection Rule
The above statutory provision embodies the anti-dissection rule. In cases of trademark infringement which involve composite marks, the anti-dissection rule requires the Courts to consider the composite marks as an indivisible whole rather than truncating or dissecting them into component parts to determine deceptive similarity between the marks. This rule is based on the notion that a typical prospective customer will be impressed by the composite mark as a whole rather than its individual components. Such a dissection of a trademark has been discouraged by the Supreme Court while laying down the guidelines for comparison of trademarks, as enumerated below, in Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. [2001 (2) PTC 541 SC] (B. N. Kirpal, Doraswamy Raju, British Kumar, JJ.):
Thus, the Apex Court reinforced the statutory rule of anti-dissection by laying down that a mark must be considered as an indivisible whole while comparing it with another mark. However, since there cannot be any straitjacket formula to determine deceptive similarity, the Courts have often deviated from the anti-dissection rule and evolved the rule of dominant feature.
The Rule of Dominant Feature
The dominant feature rule states that a trader is considered to have infringed on a mark even if he or she uses one or more of its dominant elements without using the entire mark. The Courts have noted that dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. The rule of dominant feature is refelcts in Section 11(1)(b)  of the Act, which provides that “…a trademark shall not be registered if, because of, its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark”. It can be inferred that where a mark copies a dominant feature of another mark, it can be said to infringe the mark due to deceptive similarity.
Thus, technically, the rule of dominant feature permits the Courts to dissect a composite mark and consider only a dominant part of the whole trademark to determine deceptive similarity, rather than considering the trademark as an indivisible whole. The very nature of this rule makes it adverse to the rule of anti-dissection, thereby leading to an anomaly in judicial decisions. However, the Courts have clarified that the two rules are not antithetical to each other. The notion that the anti-dissection rule does not impose a complete embargo on the consideration of constituent elements in a composite mark was made abundantly clear by a Division Bench (Pradeep Nandrajog, Mukta Gupta, JJ.) of the Delhi High Court in South India Beverages Ltd. v. General Mills Marketing Inc. [2015 (61) PTC] . The Court had effectively held that “the principle of ‘anti dissection’ and identification of ‘dominant mark’ are not antithetical to one another and… the said principles rather compliment each other…”. Thus, the Court observed that the rule of dominant feature is not averse to the rule of anti-dissection rule, and that the two rules work in tandem.
In conclusion, there is no bar on consideration of constituent elements of a mark for determining deceptive similarity. The courts are permitted to dissect a composite mark and apply the rule of dominant feature to ascertain deceptive similarity between the two marks as and where required. The rule of dominant feature is therefore not an exception nor is contradictory to the statutory rule of anti-dissection.
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