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TMI Blog2022 (11) TMI 213X X X X Extracts X X X X X X X X Extracts X X X X ..... ch of this Court had explained the anti-dissection rule in some detail. The Court reiterated that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their components parts for comparison . However, the Court had also observed that while a mark is to be considered in entirety, yet it is impermissible to accord more or less importance or dominance to a particular portion or element of a mark in cases of composite marks . In the facts of the present case, the learned Single Judge had found that the appellant held registration of the device marks/composite marks that contain the word Vasundhra but it did not have any registration of the word mark VASUNDHRA . It is material to note that the appellant had applied for registration of the word mark but the same has not been granted to it as yet. The Court had, thus, found that the appellant did not have an exclusive right to use the word Vasundhra except as part of its device trademarks. This Court finds no infirmity with the said view. This Court concurs with the view that a proprietor of a trademark cannot expand the area or protection granted to the mark. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... stration for its domain name, that is, www.vasundhrajewellers.com, and has further, obtained registrations of various other domain names, which are listed below:- i. www.vasundhra.com ii. www.vasundhara.com iii. www.vasundhra.in iv. www.vasundhrajewellers.in v. www.vasundhrajewellers.com vi. www.vasundhrajeweller.in 5. On 19.12.2017, the appellant applied for the registration of the device mark , claiming use of the mark since 17.08.2016, under Class 14 (trademark application no: 3705706). The said mark is registered and valid till 19.12.2027. 6. On 22.05.2019, the appellant also applied for registration of the device mark , under Class 14 (trademark application no: 4183139), claiming use of the mark since 28.10.1999. The said mark is registered and valid till 22.05.2029. 7. The aforesaid registered trademarks of the appellant are hereafter collectively referred to as the VASUNDHRA Trademarks . 8. The appellant applied for registration of various other trademarks, including the word marks VASUNDHRA JEWELLERS and VASUNDHRA JEWELLERS PRIVATE LIMITED . However, the registration of the aforesaid marks were opposed at the Trademark Registry. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ourt in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: (1965) 1 SCR 737 and on the strength of the said decision, contends that the word Vasundhra is an essential feature of its trade mark and thus, in terms of Section 29(2)(b) of the TM Act, the use of the impugned marks by respondent. 1 for allied and cognate goods would amount to infringement of the VASUNDHRA Trademarks. 15. The appellant claims that the mark VASUNDHRA has no prior connection with the business of jewellery and thus, are identified with its business and therefore, the same is entitled to protection as a trade mark. The appellant further claimed that since respondent no.1 has applied for registration of its mark under Class 25, it is estopped from contending that the said mark is not entitled to protection. It referred to the decision in the case of Automatic Electric Limited v. R.K. Dhawan Anr.: (1999) SCC OnLine Del 27, in support of its contention. 16. The appellant further contended that mere presence of a mark in the Register of Trade Marks is not evidence of its use. It referred to the decision of Century Traders v. Roshan Lal Duggar Co.: (1977) SCC OnLine Del 50, in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ment 23. The learned Single Judge found that albeit the VASUNDHRA Trademarks were registered, however, the appellant did not hold any registration for the word mark VASUNDHRA . The learned Single Judge further held that device mark, the essential feature of the same is equally entitled to protection at the same time, it has to remembered that in extending such protection, the party does not lay a claim of exclusivity in a mark to which otherwise he would have been unable to do so. The possibility of the proprietor attempting to expand the operation of his trade mark cannot be ignored or overlooked . 24. The learned Single Judge further referred to the decision in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.: 2001 PTC 300 (SC), wherein the Supreme Court had laid down the following test for deciding the question of deceptive similarity:- 35. Broadly stated in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered: a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n India. 26. In terms of the impugned judgment, respondent no. 1 was further bound down to the statement made before the learned Single Judge that it would not use the impugned mark in the future. Submissions 27. The learned counsel appearing for the appellant has assailed the impugned judgment on, essentially, two fronts. First, he submitted that the reasoning that the word Vasundhra is a common name in India and therefore, an exclusive right to use the same cannot be granted, is palpably erroneous. He submitted that the word Vasundhra is not a generic term, which is associated with jewellery. Thus, even if the said word is a generic word and used in common language, it nonetheless can be recognised and registered as a trademark if it is exclusively associated and identified with the business of the appellant. He submitted that exclusivity in use of the word Vasundhra , as a mark, cannot be denied solely on the ground that it is a common name. 28. Second, he submitted that the learned Single Judge erred in not appreciating that the word Vasundhra is a dominant part of the VASUNDHRA Trademarks and therefore, it was entitled to protection under the provis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance maybe phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trademark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. (Underlined for emphasis) 31. In Pinto v. Ba ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... han breaking the marks up into their component parts for comparison. This is the anti dissection rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed: The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety. The anti-dissection rule is based upon a common sens ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ew. This Court concurs with the view that a proprietor of a trademark cannot expand the area or protection granted to the mark. Indisputably, the appellant does not enjoy the monopoly for use of the word Vasundhra . 36. This Court is also of the view that competing marks viewed as a whole The VASUNDHRA Trademarks and the device mark VASUNDHRA FASHION/ are not deceptively similar. The contention that the word Vasundhra is a dominant part of the trademarks and therefore, entitled to protection is, prima facie, unpersuasive for several reasons. 37. First, that on a plain comparison of the VASUNDHRA Trademarks with the device mark /VASUNDHRA FASHION , it is apparent that the trademarks are not similar. Even if it is accepted that the word Vasundhra is a dominant part of the VASUNDHRA Trademarks, the device label /VASUNDHRA FASHION cannot be accepted to be deceptively similar merely because it includes the word Vasundhra . The dominant part of the said trademark is a leaf, which is not common to the competing marks. 38. Second, the word Vasundhra is a generic word and it is brought on record that there are several registered trademarks, which include ..... X X X X Extracts X X X X X X X X Extracts X X X X
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