A lot of times we have come across the use of the name of well-known brand in a logo of another product. The question that comes up is whether the use of core words of a registered mark can be used by another company? Is such a use permitted under the Trade Marks Act?
Conditions under Which It Is Permitted
1. If there is a case where large number of persons, traders, firms, institutions and companies are using the core word of a registered company as part of their label then such a word can become a generic term which will allow other interested person to use the word in their logo provided the logo is distinctive.
2. If it can be proved that the core word is descriptive or common to the trade then such a use is permitted.
3. Section 17(2)(b) of the Trademarks Act states that when a trade mark 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. Therefore, the already registered trademark will not have an exclusive right on matter forming part of the registered mark.
4. If by explicit disclaimer, a proprietor has waived away his right to protect a part of the mark. A disclaimer is to define the rights of the proprietor under the registration. Section 28(2) of the Trademarks Act states that the exclusive right to the use of a trade mark shall be subject to any conditions and limitations to which the registration is subject. Therefore, the rights are limited to what it is defined in disclaimer.
5. Section 30(2)(a) of the Trademarks Act states that a registered trade mark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services. Therefore, in this way, use of core word by another company is allowed.
6. If the entire label was registered as a whole and no registration was seeked on part of the logo i.e. a word mark then the core words can be used by another company.
7. If the colour scheme, lay out, design, getup of the logo is distinctive and invented by the person and it can be proved that the person is not trying to encash upon the goodwill of the other then the use of core words is allowed.
Cases Where Use of Core of Words Was Allowed
In the case of M/s. Zari v M/s. Zari Silk India Pvt. Ltd., 1 an application was filed for using its trademark "ZARI" or similarly deceptive mark or otherwise passing off its own manufactures under the mark "ZARI" (by Anju Shankar) as that of the Company. The Court held that there is no prima facie case as the get up, label design, colour scheme of the firm was different from that of the company's registered label trade mark and also that the firm's logo/trade mark specifically indicated its goods were sold as designed by Anju Shankar taking away all possibility of confusion and deception.
In the case of M/s. Matrumal Dhannalal Oil Mills v. Om Prakash Trading, 2 the Petitioner filed a suit seeking for relief of cancellation against the respondent for use of the mark Shri Radha Krishna Murali Brand along with device depicting Lord Shri Krishna and Radha with cow. The Petitioner is registered proprietor of the mark Radha Krishna with device Radha Krishna. The Court held that the two labels are different and distinct and are not deceptively similar. However, both the labels were registered in different classes.
In the case of M/s. T.T. Industries v M/s. Titan Polythylene, 3 the registered mark Titan was used for registration of label mark Titanlene, the Court held that the mark should be treated as a composite mark and that there is no likelihood of confusion.
Footnotes
1 M/s. Zari v M/s. Zari Silk India Pvt. Ltd., 2014 SCC OnLine Raj 1179.
2 M/s. Matrumal Dhannalal Oil Mills v. Om Prakash Trading, 2014 SCC OnLine IPAB 50.
3 M/s. T.T. Industries v M/s. Titan Polythylene, 2012 SCC OnLine IPAB 97.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
