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October 18, 2021

Court Case Bulletin (CCB): Constituent Elements Of A Composite Mark Can Be Considered While Determining Deceptive Similarity Between Marks

Author: Intern - Jahnvi Sharma

In the matter of Avtar Singh & Others. v Sakshi Srivastava & Another [CS(COMM) 385/2020], Single Judge [N. Jayant, J.] of the High Court of Delhi, vide order dated 4th October, 2021, allowed an Interim Application for permanent injunction against the Defendants, holding effectively that the constituent elements of a composite mark can be considered while determining deceptive similarity between marks.

Section 17(2)(b) of the Trade Marks Act, 1999 provides for the anti-dissection rule and 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”. Thus, the anti-dissection rule requires courts, in cases of trademark infringement involving composite marks, to consider composite marks as a whole rather than dissecting them into component parts and comparing with corresponding parts of a rival mark. The question which arises is whether a proprietor can succeed in a claim of infringement by claiming an ‘exclusive right in only a dominant part of the whole of the trade mark registered by him’?

The Plaintiff contends that the Defendant’s mark ‘WOODLEY’ is deceptively similar to the trademarks of the Plaintiff, namely ‘WOODS’ and ‘WOODLAND’ as the dominant element of the mark WOOD has been copied by the Defendants and seeks a permanent injunction against the Defendants.

The Defendants submit that the plea of deceptive similarity raised by the Plaintiff does not hold any ground as the Plaintiff alleges that the Defendants have copied its dominant constituent mark WOOD and the anti-dissection rule, enshrined under Section 17(2)(b) of the Trade Marks Act, 1999, doesn’t confer any exclusive right in only a dominant part of the whole of the trade mark and prevents the evaluation of constituent elements of a composite mark to determine deceptive similarity.

The Court rejected the Defendant’s argument of the application of anti-dissection rule and noted that the dominant elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole and that the principle of ‘anti dissection’ and identification of ‘dominant mark’ are not antithetical to one another. The Court allowing the Interim Application of the Plaintiff seeking permanent injunction against the Defendants held that “the anti-dissection rule doesn’t impose a complete embargo on upon consideration of the constituent elements of a composite mark“.

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.

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