Effect of trademark registration parts
The effect of trademark registration parts may consists various points that consult on the proprietor rights of the trademark.
Policy and Object
The object of the legislature was to relieve traders from the necessity of disclaiming and I think it follows from this, that the condition is one for the imposition of which some goods reason ought to be established, rather than one which ought to be imposed unless some good reason to the contrary is made out. In other words, disclaimer will have to be looked into. It may not affect the rights of the proprietor in passing off action but where infringement of the registration is claimed, the disclaimer part of the mark has to be ignored.
As regards the exercise of the discretion by the registrar and as to how far the high court can interfere with such direction. Disclaimer of a part of the mark does not arise unless the whole mark is the subject-matter of consideration for registration. The scheme underlying the provision is qualified for trademark registration. It should be registered as a whole except to protect public or private rights when disclaimer having the effect of depriving the rights of the proprietor could be insisted upon.
Common to the trade
These words have been dealt with under (old) section. These words may refer to actual use or possibility of use in the trade. The trademark was held to be distinctive but the court laid it down as a condition of registration that the applicant should disclaim any right to the exclusive use of the diamond-shaped border there being already on the register several other marks registered for similar goods having such borders and the word “diamond” and also the letter “T” so as to prevent it being sought, or the applicants claiming, that the registration conferred such rights.
Where an application for registration the applicants trademark contained a particular representation of a cat, a cat being common to the trade. The registrar directed that the trademark should be registered with a disclaimer stating that no claim was made to the use of a car per se. The applicants did not object to such disclaimer, the court of appeal allowed the registration to proceed and did not disturb the direction of the registrar as to such disclaimer.
Election to Expunge
A proprietor can, if he does not want to submit to disclaimer, can / may elect to have his mark expunged. Under (old) section 57(1) (e), he rights given by the existing trademark registration and make any consequential alteration or amendment in the certificate of registration.
Effect of Proviso
The proviso to (old) section 17 preserves intact any right which the proprietor may otherwise under any other law have in relation to the trademark or any part thereof. The disclaimer is only for the purposes of the act. That is to say, the special advantages which the act gives to the proprietor by reason of the trademark registration do not extend to the parts or matters are not within the protection of the statute. That circumstance, however does not mean that the proprietor’s rights, if any, with respect to those parts or matters would not be protected otherwise than under the act.
If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured of sold by him, otherwise in relation to his trademark, he may, on proof of sold by him, otherwise in relation to his trade, he may, on proof of the necessary facts, prevent any infringement of his right by a passing off action or a prosecution under the Indian Penal Code.
Appeal was filed against an order of Assistant Registrar rejecting application of the appellant for trademark registration AATH PHOTO MARKA snuff. The opponent is the proprietor of trademark label containing interalia eight photographs, the expressions JANTA MAIL SNUFF numeral “8” and AATH PHOTO MARKA.
Time for Requiring Disclaimer
Disclaimer cannot only be insisted upon by the registrar when the application to register is considered but it may be insisted upon by the Appellate Tribunal and also an application to rectify. In the letter case the disclaimer can be insisted upon made circumstances which may have arisen since the date of the original registration. Under (old) section 35 power is to given to order disclaimer to words used as the name or description of an article or substance and arising under conditions laid down in the said section. But no such disclaimer shall effect any right of the proprietor except as such as arisen out of trademark registration in respect of a disclaimer.