Trademark Exclusivity: An Analysis

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A trademark can be defined as a mark, word, sign which is capable of being represented graphically and distinguishing the goods and services from one another.
India Intellectual Property
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A trademark can be defined as a mark, word, sign which is capable of being represented graphically and distinguishing the goods and services from one another. Once a mark is registered, a registered proprietor obtains an exclusive right of using their trademark and also the right to obtain a relief against the infringement of the registered mark over their goods and services. However, Section 17(2)(b) of the Trademarks 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". In instance where the proprietor wants to claim exclusive rights over any part or word of the mark, then separate registrations should be made over the parts of the marks in order to claim exclusivity. However, if a mark has acquired distinctiveness which replaces the primary meaning of the mark and provides secondary meaning related to the goods and services offered under the mark, then the concept of exclusivity will prevail. The same has been recognized by the judicial authorities in various instances; Heinz Italia & Anr. v. Dabur India Ltd. 2007 (35) PTC 1 (SC) being the prominent one wherein the court held that the word "GLUCON-D" has acquired distinctiveness in the market due to its extensive sales.

But can a suit be brought by the registered proprietor of the mark for claiming exclusivity over the part of their mark which is not registered? To demystify the same, the case study of the conundrum between PhonePe and Bharat Pe (Phonepe (P) Ltd. v. Ezy Service CS (COMM) No. 292 of 2019) should be analysed. PhonePe and BharatPe are online payment apps for the consumers to make payments over the different counters. The plaintiff had filed a suit against the defendant to seek a permanent injunction for using the suffix 'Pe' which was identical to the plaintiff's trademark Phone Pe. The Delhi High Court refrained to award a permanent injunction against BharatPe, holding that generic words or descriptive words like 'Pe' does not give the exclusive right to the owner. The court held that the "Pe" was merely a phonetic which represents the word "Pay" which are used by various applicants and no exclusive rights can be imposed, in respect of the word "Pe", under the Act, unless it has acquired a secondary meaning with respect to the plaintiff's business.

It is pertinent to note that the exclusivity can only be claim over the mark which has acquired distinctiveness in the market through their extensive sales and usage in the market or by claiming registration over the separate parts over the words of the mark.

Disclaimer: This article was first published in the S&A Law Offices - 'Intellectual Property (IP-Tech)' newsletter in May 2024.

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