Recently, the Hon'ble High Court of Delhi dealt with the issue of protection over part of a trademark in Hamdard National Foundation (India) & Anr. vs.Sadar Laboratories Pvt. Ltd. ^[1]. The dispute revolved around two 'word' marks- "Rooh-Afza" and "Dil-Afza". The Plaintiff (having registered trademark – "Rooh Afza") alleged trademark infringement and passing off against the Defendant (having registered trademark- "Sharbat Dil Afza"). The Plaintiff also sought an ad-interim injunction seeking to restrain the Defendant from infringing their registered trademark.

While dismissing the application for ad-interim injunction, the Hon'ble High Court deliberated over the use of the common suffix 'Afza' in both marks, holding that although the Plaintiff can claim exclusivity over the entire term "Rooh Afza", none could be claimed over the word 'Afza'. The reasoning behind this was two-fold- firstly, since the suffix was common, the distinguishing factor would be the earlier portion of the word mark. In this regard, it was held that since the words 'Rooh' and 'Dil' have completely different meanings, there was no likelihood of confusion in the mind of the common consumer. Secondly, since the Plaintiff did not apply for registration of trademark over the word 'Afza' separately, they were disentitled from claiming exclusivity over the same.

Notably, the issue of protection and exclusivity of part of a registered word mark has always been a contentious issue. Although the Trademarks Act 1999 ("Act") broadly covers the issue of protection of composite marks and parts thereof, the law governing disputes related to common suffixes, prefixes and parts is primarily a judicial construct. As discussed herein, the Hon'ble High Court of Delhi has shaped the subjective contours of such protection, which seem to further the intent of the Act.

As per Section 15 of the Act, the proprietor of the trademark may apply for the registration of a part thereof as a separate trademark. In such a case, subject to the fulfilment of the conditions under the Act, the whole trademark as well the part thereof, will exist separately and independently in the Register of Trademarks. The Hon'ble High Court of Delhi in Vardhman Buildtech Pvt. Ltd. v. Vardhman PropertiesLtd.^[2] dealt with the import of Section 15 of the Act. The dispute revolved around the word marks- "Vardhman Estates and Developers Pvt. Ltd. / Vardhman Buildtech Private Limited" belonging to the Appellant and "Vardhman Plazas", belonging to the Respondent. The issue of infringement was raised by the Respondent due to the use of the word 'Vardhman' by the Appellant. The Court observed that as per Section 15 of the Act, the Respondent had an option to separately register the word 'Vardhman' as their trademark, however no such application was made. The Court further held that in the absence of a separate trademark in the word 'Vardhman' the only distinctive mark belonging to the Respondent would be 'Vardhman' + 'Plazas' used in conjunction and not as separate words. This interpretation was also followed by the Hon'ble High Court in Hamdard (supra).

The application of the aforesaid interpretation can also be noticed in the recent decision of the Hon'ble High Court of Delhi in Moonshine Technology Private Limited vs. Tictok SkillGames Pvt. Ltd. & Ors.^[3] The dispute herein revolved around the word marks- "Baazi, Baazi Games, Poker Baazi, Rummybaazi" etc. registered by the Plaintiff and "Winzo Baazi" being used by the Defendant. The Plaintiff alleged that the use of the word 'Baazi' by the Defendant amounts to trademark infringement and passing off. Pertinently, in the present case, the Plaintiff along with having registered trademarks for the combination of words - "Pokerbaazi", "Rummybaazi" etc. also had a registered trademark for the word "Baazi" separately. The key distinction in this case was held to be that the Plaintiff had an independent registered trademark in the word "Baazi" and not only the composite words where 'Baazi' was being used as a suffix. Due to the separate trademark and also due to the acquired distinctiveness, the Court restrained the Defendant from utilising the word "Baazi" and other word marks registered in the name of the Plaintiff, till the disposal of the suit.

With respect to trademarks containing words being used in conjunction, Section 17 of the Act states that in the absence of a separate application for registration of part of the trademark, the protection under the Act shall only extend to the whole trademark. Thus, implying that if the proprietor has not taken recourse to Section 15 of the Act, the benefit of registration under Section 28 of the Act shall only extend to the trademark as a whole and not any part thereof. The purport of Section 17 can be articulated as the 'anti-dissection rule' which was discussed by the Hon'ble High Court of Delhi in PhonePe Private Limited vs. Ezy Services & Anr.^[4]. The dispute therein revolved the word marks – "PhonePe" & "BharatPe" along with the common use of the suffix 'Pe'. The anti-dissection rule dictates that once protection is granted under the Act for a mark, the exclusivity of use would be extended only to the mark in its entirety and not to parts thereof. The benefit of registration can only be claimed when the words are used in the exact and complete combination. Moreover, the anti-dissection rule is also rooted in the fact that a common consumer of average intelligence and imperfect recall would not ordinarily bifurcate a composite combination of words and consider the meaning of each word contained in a trademark. Hence, it was held that the Plaintiff could not claim exclusivity over the suffix 'Pe' alone.

However, there exists an exception to the aforementioned principles which was also discussed in Phonepe (supra). In case, the part of the trademark contains the 'essential feature' then the use of such essential features by a third party would also result in infringement of the trademark. In Proctor and Gamble Company vs. Joy Creators and Ors.^[5] , the Hon'ble High Court of Delhi was dealing with the issue of trademark infringement between the word marks- "Olay Total Effects" registered by the Plaintiff and "Joy Ultra Look Total Effects" being used by the Defendant. The dispute revolved around the use of the words 'Total Effects'. The Court observed that the words 'Total Effects' are an essential component of the Plaintiff's trademark. Irrespective of those words being part of a composite expression, the Plaintiff utilises the words 'Total Effects' as an integral component of their brand, thereby warranting protection from infringement. Further, the use of the words 'Total Effects' had come to be associated with the Plaintiff, and the use of those words by the Defendant may cause confusion in the mind of the common consumer with regards to the source of the product. It was held that once it is proved that a part of the trademark is an essential and integral feature, no addition/deletion of any prefix or suffix would come to the aid of the Defendant. Hence, the Defendants were restrained from selling or manufacturing any product which infringes the mark "Olay Total Effects".

The exception of 'essential features' of a trademark was also discussed by the Hon'ble High Court of Delhi in Five Star Health Care P. Ltd. vs Tara Chand Jadwani^[6] . The dispute revolved around the use of the word 'Star' as a suffix in the marks- "5 Star" belonging to the Plaintiff and "6 Star" being used by the Defendant. It was held that the word 'Star' is an essential feature of both marks, and the common consumer of average intelligence was likely to get confused between the two due to the phonetic similarity as well as the lack of distinctiveness in the earlier portion of the marks – the digits 5 & 6. Consequently, the Defendant was restrained from infringing the mark of the Plaintiff.

What emerges from the aforesaid discussion is that a part of a trademark can be protected only in two cases- when a separate application for registration of that part has been filed by the proprietor of the mark as per Section 15 of the Act or when the proprietor is able to show that such part of the trademark is an essential feature thereof. While the former is statutorily governed with its parameters clearly defined, the latter is a subjective test to be circumstantially proved keeping in view the distinctiveness of the mark and its perception by the common consumer having average intelligence and imperfect recall. Additionally, in case of the 'essential feature' exception, the general bar against dissecting trademarks under Section 17 of the Act would also have to be overcome by the party alleging infringement.

The Author is an Advocate practicing before the Delhi High Court. Views are personal.