Introduction
In addition to the specific guidelines outlined in the Indian Trademarks Act and the Trademark Rules, the landscape of trademark law is enriched by foundational principles established through years of judicial decisions. Among these, two key principles—’Trademark to be read as a whole’ and the ‘Rule of dominant feature’—play a significant role in defending and countering the conflicting marks present in the market. These principles are often employed strategically by legal experts when dealing with trademarks held by opposing parties. However, the interplay between these principles introduces a persistent challenge, creating a kind of puzzle. This article seeks to unravel the intricacies of both principles, providing a clear understanding of each and exploring the intriguing connection that exists between them.
Trademark to be read as a Whole OR Anti-dissection Rule
The ‘Trademark to be read as a whole’ principle emphasizes the importance of looking at a trademark in its entirety rather than isolating specific elements. It encourages a comprehensive assessment, considering visual, phonetic, and conceptual aspects. This principle essentially advocates for appreciating the overall impression a trademark conveys. The Rule of “Trademark to be read as a whole’, can find its place in Sections 15 and 17 of the Trademarks Act, 1999, posits that a composite trademark should be viewed as an indivisible unit. It discourages the dissection of trademarks into distinct parts, promoting the idea that consumers are influenced by the mark as a whole, not its individual components. The rationale behind this rule is grounded in the belief that a typical consumer is more influenced by the composite mark as a whole rather than its isolated elements. The Supreme Court, in Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd., outlined guidelines emphasizing the indivisibility of trademarks during the comparison process:
Consideration as a Whole: Trademarks must be assessed as unified entities, discouraging the isolation of specific parts for comparison.
Holistic Comparison: Rejecting meticulous or letter-by-letter scrutiny, the correct approach involves a comprehensive side-by-side assessment.
Average Consumer Perspective: Evaluations should reflect the viewpoint of an individual with average intelligence and imperfect recollection.
Overall Similarity: Factors such as structural, visual, and phonetic similarities, along with the similarity of ideas conveyed, contribute to the assessment of deceptive similarity.
Rule of Dominant Feature
On the other hand, the ‘Rule of dominant feature’ directs attention to elements within a trademark that hold prominence or uniqueness. It recognizes that certain features may play a more significant role in consumer perception and brand recognition. In simple terms, it’s about acknowledging the standout components that make a trademark distinct.
In the cases of Phonepe Private Limited v. Ezy Services and Cadila Healthcare Ltd. v. Aureate Healthcare Pvt. Ltd., the dominant feature rule took centre stage. In Phone Pe’s case, the court looked closely at the term ‘Pe,’ recognizing its descriptive nature but ultimately finding it not dominant in the overall comparison of marks.
On the other hand, Cadila Healthcare’s case, the court examined both ‘PANTOBLOC’ and ‘PANTODAC’ in their entirety and found the defendant’s mark, ‘PANTOBLOC,’ to be deceptively similar to the plaintiff’s mark. This decision highlighted the fundamental concept of the dominant feature rule, emphasizing the need to assess trademarks in a holistic way rather than breaking them down into separate parts.
Co-existence in Contradiction
The contradiction arises when considering whether a trademark should be viewed as an indivisible whole or if certain elements can be isolated for analysis. The clash becomes apparent in cases where the dominant feature rule seems to allow dissecting a composite mark, potentially conflicting with the principle of reading the trademark as a whole. Despite this apparent contradiction, the case of South India Beverages Ltd. v. General Mills Marketing Inc. shows how the rules of dominant feature and anti-dissection can work together harmoniously. The court in this case clarified that while anti-dissection suggests looking at a whole trademark, it doesn’t completely stop considering individual parts. The court, taking a practical approach, stated that the dominant feature rule and anti-dissection rule aren’t in conflict; they actually support each other in ensuring trademark decisions are clear and fair. This case highlights a balanced perspective in trademark law.
Conclusion
In conclusion, the principles of “Trademark to be read as a whole” and the “Rule of dominant feature” in trademark law, while seemingly contradictory, can coexist to achieve a balanced and fair approach in adjudicating trademark disputes. The legal landscape, as demonstrated by cases like South India Beverages Ltd. v. General Mills Marketing Inc., reveals that both principles play complementary roles. While the holistic view of trademarks is essential, recognizing the significance of dominant features ensures a nuanced understanding. Striking a harmonious coexistence between these principles is crucial for fostering clarity and fairness in trademark adjudication.