Does registration of the individual components of your composite mark, alone, confer effective protection to your composite mark taken as a whole? Likewise, is the mere registration of your composite mark, without separate registrations for its constituent elements sufficient enough to enforce your rights in the constituent elements? Read on to find out the answers and to know how your composite mark can best serve the interests of your business.
As is the model in various jurisdictions, the law on trade marks in India confers exclusivity to the use of a registered composite mark taken as a whole, unless its individual components are registered separately. Also, no such exclusivity is conferred in respect of the elements of a composite mark that are common-to-trade or are non-distinctive.
However, the registration of a composite mark, or its individual elements, alone, may just not be optimal to enforce your rights in an infringement action in India. Adverse parties may either adopt marks that are identical/similar to your composite mark as a whole, or to the constituent word or design elements of your composite mark. No doubt, the composite mark registration alone may be sufficient to obtain an injunction against an infringer who adopts a mark, identical/similar to your composite mark as a whole. However, the same may not always be true if the infringer uses a mark, identical/similar to the individual word or design elements of your composite mark, which are not registered separately. Thus, the registration of a composite mark may afford no statutory protection to its constituent elements per se.
Even though a mark is to be considered in its entirety and not dissected into its constituent parts, courts have accorded greater dominance to a particular element of a composite mark vis-à-vis its other constituent elements, if it appears to be an “essential feature” of the mark. Thus, a composite mark may be infringed if an essential, distinguishing and identifying feature of the composite mark, is adopted in an identical or deceptively similar manner.
Indian jurisprudence also suggests that the enforcement of rights in a composite mark may seriously weaken if the composite mark, as used, is not registered. In other words, the mere registration of the individual elements of a composite mark alone may just not be good enough to afford protection to the composite mark as a whole.
It is, therefore, in the best interests of businesses that they apply to register not only their composite mark(s), but also the word and design elements of the composite mark(s). As noted above, registration for the common-to-trade or non-distinctive elements may not be possible. Nevertheless, such registrations of the sufficiently distinctive individual elements could, at the least, serve as defensive registrations.