This article analyzes a recent judgment before the Hon'ble High Court of Delhi, which addressed the effect of disclaimers attached to an earlier registered trademark on subsequently associated registered trademarks.

The case involved a dispute between the plaintiff, holding the registration for "CHINA BISTRO," and the defendant using the trademark "WOW CHINA BITRO."

The defendant argued that disclaimers attached to earlier registered trademarks also apply to subsequently associated registered trademarks. The court's ruling clarified the scope of associated trademarks and the applicability of disclaimers to later trademarks.

Introduction:
When trademarks are associated, it allows for the transfer and assignment of multiple trademarks as a single unit. This article delves into the legal implications of disclaimers attached to an earlier registered trademark concerning subsequently associated registered trademarks, using the recent CHINA BISTRO case as a reference.

Background of the CHINA BISTRO Case:
The plaintiff, who owned the registered trademark "CHINA BISTRO," filed a suit against the defendant's use of the trademark "WOW CHINA BITRO." The defendant's argument centered on the idea that subsequently registered trademarks of the plaintiff, which were associated with the earlier registered trademarks having disclaimers, should also be subject to the same disclaimer.

Plaintiff's Clarification on Associated Trademarks:
The plaintiff countered the defendant's argument by referring to Section 44 of the Trade Marks Act, asserting that associated trademarks are treated as a single unit only for the purpose of assignment and transmission. Other than that consideration, each trademark, even if associated with each other, should be treated as separate trademarks. Thus, the disclaimer attached to trade mark no. 1470912 and 2264846 would not apply to the later trademarks.

Court's Observations and Ruling:
The court carefully examined the arguments presented by both parties. It noted that no provision was shown indicating that a disclaimer in an earlier registered trademark would automatically apply to subsequently associated registered trademarks.

The court emphasized that if the intent of the registering authority was to include such disclaimers for later marks, the certificate of registration for those marks would expressly reflect that.

Based on its interpretation of Section 44 of the Trade Marks Act and considering the lack of evidence supporting the automatic extension of disclaimers, the court ruled that the disclaimer in the present case would apply only to the first two registered trademarks, i.e., trade mark no. 1470912 and 2264846. The subsequently associated registered trademarks, including "WOW CHINA BITRO," would not be subject to the earlier disclaimers.

The Concluding Note:
The CHINA BISTRO case provides valuable insights into the legal aspects of disclaimers attached to earlier registered trademarks concerning subsequently associated registered trademarks. The court's ruling clarified that such disclaimers do not automatically extend to later trademarks, unless expressly stated in the certificate of registration.

The Concluding Note:
Case Title: Foodlink F and B Holdings India Pvt.Ltd. Vs WOW Momo Foods Private Limited
Date of Judgement/Order:03.08.2023
Case No. Co Comm (IPD-Pat) 3 of 2021
Neutral Citation: 2023:DHC : 5521
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, H.J.

Disclaimer:
Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539