Author: Intern - Tripti M Kumar
In the matter of Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Limited [CS(COMM) 551/2020], a Single Judge [Asha Menon J.] of the High Court of Delhi, held that unless registered as separate words, parts of a trademark cannot be subject to exclusive use by the proprietor.
Section 15 of the Trade Marks Act, 1999 provides, “Registration of parts of trademarks and of trademarks as a series. — (1) Where the proprietor of a trademark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trademarks…”. The question that arises here is whether owning a registration of a trade mark provides ‘exclusive use of the parts’ thereof by the proprietor or if registration of individual parts is mandatory to claim exclusive use thereof.
The Plaintiffs argued that their mark ‘Rooh Afza’ fits the definition of a ‘well-known trade mark’ under Section 2(1)(zg) of the Trade Marks Act, 1999 and that the word ‘Afza’ had acquired a secondary meaning and thereby claimed exclusive rights to use the term ‘Afza’. The Plaintiffs further claimed that they had been making and selling their product/sharbat under the name ‘Rooh Afza’ since 1907, long before the Defendants registered their trademark (Dil Afza) in 1942.
The Defendant contended that the Plaintiffs have not registered individual parts of the trademark separately, and can therefore not claim exclusive rights over the parts. The Defendant also contended that monopoly cannot be claimed for common words used in the field and also the fact that the Plaintiffs had failed to show that ‘Afza’ had obtained a secondary meaning to relate to their products exclusively since there have been several ‘sharbat(s)’ using the name.
The Court, referring to Section 15(1) of the Trade Marks Act, 1999, dismissed the Plaintiffs’ application and held that “The plaintiffs do not state that they had applied for and obtained registration for the exclusive use of the word ‘Afza’. Thus, it is clear that the exclusivity that the plaintiffs can claim is to the complete name ‘Rooh Afza’ and not to either of the two words that constitute the trademark.”.
Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.
Copyright: ALG India Law Offices LLP