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A trademark’s degree of registrability or its ability to sustain a suit or enforce a suit hinges upon the nature of the mark. Marks can range from being generic, descriptive, and suggestive to arbitrary and fanciful thereby shaping the strength of the mark. This varying degree of strength holds different implications for word or device marks compared to composite marks.

A composite mark may consist of a word or words combined with a design or designs as evident from the use of the phrase “or any combination” in the definition of a mark under Section 2(m) of the Trade Mark Act, 1999. It is usually a combination of elements, such as words, logos and designs which gives it a more enhanced uniqueness, making it more visually appealing. Since composite marks are a combination of both textual and graphical elements, they tend to offer stronger protection than other marks owing to a more distinctive and unique appearance of the mark.

An additional feature that follows composite mark is that the mark must be seen as a whole and not by its individual component. The rule finds support not only in judicial interpretations but also in the provisions of Section 17 of the act, which elucidates how an owner of the composite mark will gain rights in respect of the mark as a whole and not on its individual components. This is again supplemented by Section 15 of the act which lays down that to be entitled to proprietary rights to any individual parts, they must be registered. However, the Trademark Registry blatantly erred in applying the principles surrounding composite Mark.

TrademarkIn the case of Abu Dhabi Global Market[1], the appeal was against the order of the Registrar rejecting the registration application of the composite mark of the appellant for lacking distinctiveness andfor the use of a geographical name. The mark consists of a circularlogo along with “ABU DHABI GLOBAL MARKET” printed at the bottom.  Amongst the many glaring errors pointed out by the Court while assailing the order of the Registrar, the Court made a pertinent observation regarding Section 9(1)(b) and its relationship with composite marks.

Section 9(1)(b) of the Act, proscribes, in precise words registration of trademarks“which consist exclusively of mark or indications, which may serve in trade to designate the geographical origin of the goods or services.” Thus, the Section makes the interpretation strict and clear that only marks solely designating any geographical original or any other factor can be refused registration. The court while following a similar line of reasoning ruled that composite marks, by their very nature,stand excluded from the scope of Section 9(1)(b). It further added that even if part of such marks consists of marks or indications which serve in trade to designate the geographical origin of the goods or services in respect of which the mark is registered, they can be registered.

Additionally, the court made a distinction in the application of the “dominant part” principle during the registration and infringement stage. The “dominant part” principle is a method of determining infringement by looking at the essential features of the mark[2]. It is also reflected in Section 11(b) of the Act wherein registration can be refused on grounds of ‘similarity’ of the mark with an earlier mark with respect to similar or identical goods which might confuse the public. The court made it categorically clear that this principle is ‘alien’ to Section 9(1)(b) since the section lays down its own “exclusivity” principle. Thus, the dissecting of composite marks for assessment for registration is antithetical to the language of Section 9(1)(b). The “dominant part” principle can play a vital role in an infringement suit, but the “exclusivity” principle forecloses any argument for dissecting the mark. Only if the entire mark exclusively falls within the category mentioned in Section 9(1)(b), then registration can be refused.

In a very similar order, in the case of Navaid Khan[3], the appellant filed an appeal under Section 91 of the act disputing the refusal of registration of his composite mark. The mark had the words ‘CruzOil’ with a yellow background with two purple rings, a unique pattern of semi-circles with images of 4 stars on alternative sides with a pattern of slanting parallel lines. The applicant also made a disclaimer regarding the use of the word ‘Oil’. It was registered in class 04 for industrial lubricants. The registry rejected his mark on grounds under Section 9(1)(b) citing the mark to consist of works exclusively of words that may serve in the trade to designate the intended purpose of the goods.

The counsel for the appellant submitted that the composite mark in question is a combination of words and devices and must be considered a whole for registration. Additionally, the mark as a whole is arbitrary, distinctive and has no dictionary meaning. While adjudicating, the court observed that the Registry has failed to treat the composite mark as it is but rather evaluated the work as a word mark. Following this, the court noted that a composite mark being a combination of words and devices must be considered as a whole for grant of registration and advised against dissecting the mark into individual parts while considering it for registration. For this, the court also made reference to the Abu Dhabi judgement and reiterated the principle of “exclusivity”.

In conclusion, the aforementioned judgements provide astute observations and bring clarity to the concept of composite marks for the Trademark Registry. The judgements have laid down that a composite mark should not be dissected but rather evaluated as a whole during the registration process. These judgments not only establish a stringent standard but also serve as a stern reminder to registries, urging them to refrain from indiscriminately rejecting marks without due consideration. By discouraging arbitrary refusals and demanding reasoned orders, these judgments aim to promote fairness and application of mind by the Registry in the registration process.

Author : Harshita Rawat,  in case of any queries please contact/write back to us via email to [email protected] or at IIPRD. 

[1] Abu Dhabi Global Market v. The Registrar of Trade Marks, Delhi, 2023 SCC OnLine Del 2947, decided on 18-5-2023

[2] S.M. Dyechem Limited v. Cadbury (India) Limited – C.A. No. 3341/2000 (Arising out of SLP (C) No. 15398/99)

[3] Navaid Khan v. Registrar of Trade Marks Office, C.A.(COMM.IPD-TM) 8 of 2023, Order dated 30-5-2023

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