Flanking of English Alphabets Between Trade Mark Does Not Indicate Infringement: Madras High Court

The Madras High Court recently held that a composite mark cannot be dissected to infer infringement unless any part of such composite mark is either registered as a separate mark or an application with respect to the same is pending for registration. The issue in the case involved the interpretation of S. 29 read with Ss. 17(1) and (2) of the Trade Marks Act, 1999.

Justice C. Saravanan, while dismissing the petition, observed, “Flanking of the English alphabets DRR between ‘Shri Mahalakshmi’ and ‘Velli Malligai’ by the defendant cannot be construed as an infringement of the Trademark (wordmark) Nos. 2649391, 2649392, 2649393, 2649394 of the plaintiff as detailed in column III … as per section 17(1) of the Trade Marks Act, 1999, when a trademark consists of several matters, it’s registration shall confer on the proprietor an exclusive right to use of the trademark taken as a whole. This is the general rule. In other words, where there is a composite registered mark, the composite trademark, has to be seen as a whole and should not be dissected to infer any infringement.”

It was added by the Court that though the plaintiff and defendants were engaged in the same business, that is the sale of silver articles, by no stretch of imagination can the use of alphabets ‘DRR’ in conjunction with the words “Shri Mahalakshmi” and “Velli Maligai”, indicates infringement in the present case.

Infringement of a composite trade mark

If a registered proprietor of a mark has either filed a separate application for registration of the part of the mark or has a separate registration for the part of the mark separately, then the said proprietor can claim monopoly over the part of the registration.

Therefore, a composite trademark can be said to be infringed, if any part of such composite mark is either;

1) registered as a separate trademark, OR

2) if an application for registering such part has been filed by the proprietor.

Brief Background

A civil suit was filed under provisions of CPC, 1908, Commercial Courts Act, 2015 and Trade Marks Act, 1999 praying for an injunction restraining defendants from infringing the plaintiff’s registered Trade Mark D.R. RAANKA and D.R.

The counsel for the plaintiff submitted that moving an application for registration of trade mark D.R.R., by the defendant, indicated their intention to defeat the present suit and as such, fell within the scope and meaning of Section 29(2)(c) of the Trade Marks Act, 1999. Reliance was placed on PP Jewellers v. PP Buildwell, 2009 SCC OnLine Del 3037, wherein the Court held that letter marks which are a combination of alphabets do not admit easy acceptance as distinctive marks.

On the contrary, counsel for the defendant submitted that as per the anti-dissection rule, one should compare conflicting marks by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. Reliance was placed on the Supreme Court decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 and Delhi High Court decision in Stiefel Laboratories v. Ajanta Pharma, 211 (2014) DLT 296, in this regard. It was further submitted that the plaintiff failed to prove that the term ‘DRR’ per se is a dominant feature of their trademark, which is as such necessary for a party claiming infringement of its trade mark.

Noticeably, the present round of litigation was following the earlier suit OS No. 4 of 2018, whereby an exparte interim injunction was allowed in favour of the plaintiff.

Case Title: DR Raanka Bros. vs. Om Prakash | CS (COMM. DIV) No. 444 of 2019