The issue of whether individual elements of a composite registered trademark can be enforced individually has been a topic of legal debate and significance. This article delves into a recent case where this question arose, examining the judgment and legal principles surrounding the matter.

Case Background:
In the case at hand, the plaintiff filed a subject matter suit based on its composite registered trademark "DMART" across various classes, including 14, 21, and 25. The plaintiff was engaged in the business under the trademark "d'mart Exclusif," offering home d'cor and gifting solutions. The suit was against the defendant's use of the "DMART" composite label in relation to their mart business.

Defendant's Claim:
The defendant claimed to be a registered proprietor of the "DMART" composite label as well. The court observed that both parties held registered trademarks in the same classes. Consequently, an action for infringement was deemed not maintainable under Section 28(3) read with Section 30(2)(e) of the 1999 Act.

Exclusivity of Individual Elements:
The court reasoned that a critical factor for not granting an injunction was that both marks were composite. Their registration did not confer exclusive rights to the individual element "d mart." Notably, the plaintiff's mark incorporated the word "Dolphin's" with a distinct image of a dolphin above "d mart." The word "d" was prominently displayed in a larger font than "mart," creating a visual distinction. Conversely, the defendant's mark featured a bright green background, with the alphabet "D" separated from "Mart" by a star and horizontal lines in a triangular format.

Holistic Comparison:
The court emphasized that a composite trademark should not be dissected for determining deceptive similarity with the impugned mark. Instead, a holistic comparison should be made by considering the rival marks as a whole. The plaintiff could not claim exclusivity over the word "d'mart" due to the absence of separate registration. Hence, the competing composite marks had to be compared comprehensively.

Deceptive Similarity Analysis:
The court conducted a detailed analysis of the competing trademarks. It observed that the plaintiff's mark had a dolphin image with the word "d mart," where "d" was distinct and emphasized. The defendant's mark, on the other hand, displayed "D" separated from "Mart" by a star and lines. Despite these differences, the court concluded that there was no deceptive similarity between the marks when considered in their entirety. In view of the above, the Plaintiff was refused the relief of interim injunction.

The Concluding Note:
The case exemplifies the legal principle that a composite trademark should be treated as a unified whole, and individual elements cannot be enforced separately. In cases where rival marks are composite, their distinctiveness and overall impression are vital considerations. This judgment reinforces the importance of comprehensive trademark registration and protection strategies, ensuring that the entirety of a composite mark is safeguarded rather than individual components.

Case Law Discussed:
Case Title: Dolphin Mart Pvt. Ltd. Vs Avenue Supermarts Limited.
Date of Judgement:21.08 2023
Case No. CS Comm 177 of 2017
Neutral Citation No: 2023:DHC:5944
Name of Hon'ble Judge: Jyoti Singh, H.J.
Name of Court: Delhi High Court

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

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