Numerous factors are taken into consideration while assessing the likelihood of confusion between two rival marks, such as the visual appearance of the marks, goods and services covered by the rival marks, the trade channels involved, etc. The anti-dissection rule is essential when comparing trademarks in India to ascertain the likelihood of confusion or deception in the minds of consumers and the public. The anti-dissection rule states that while comparing rival marks, the marks are to be viewed as a whole, in their entirety, and not dissected into individual elements. The rule is based on the assumption that the commercial impression on the average consumer is created by the composite mark as a whole and not by its individual elements or components. At the same time, the rule of dominant feature entails that using essential features of a registered trademark, even without using the whole of it, would lead to infringement.
Recently, in Bennet, Coleman and Company vs Fashion One Television LLC and Anr., the Delhi High Court passed a decision on December 18, 2023, holding that the anti-dissection rule does not result in a complete bar on consideration of dominant elements of a composite mark for determination of likelihood of confusion because the dominant elements are what attract the most attention and are likely to be relied on by the public for purposes of identification.
The Petitioner, Bennet, Coleman and Company (hereinafter referred to as the “Petitioner”) being the proprietor of the registered marks “TIMES NOW”, “ET NOW”, “MOVIES NOW”, “ROMEDY NOW”, and “MIRROR NOW” in Class 38 pertaining to television, telecommunications and broadcasting services sought the cancellation of the registered marks and in the name of Fashion One Television LLC and Anr., and Fashion One Television LLC, USA (hereinafter referred to as the “Respondents”) in class 38 in respect of the same services.
For analysing whether the marks have the likelihood to cause confusion or deception amongst the public, the Court relied on a similar judgment passed by this Court in the case of Bennet, Coleman and Company Ltd. v. Vnow Technologies Pvt. Ltd. In this case, the petitioner, who is also the Petitioner in the present case, was aggrieved by the registration of the mark in class 38. The court earlier observed that proprietorial rights can emerge from a family of marks held by a registrant where prima facie it is shown that the plaintiff has developed a ‘family of marks’ and by merely changing the first word (i.e. the non-dominant feature) of the mark, there is every possibility of confusion being caused both in trade and in the mind of any person desiring to purchase the product. This Court observed that the ‘NOW’ -centric ‘TIMES NOW’, ‘ET NOW’, ‘MOVIES NOW’, ‘MIRROR NOW’ and ‘ROMEDY NOW’ marks constitute a ‘family of marks’..
By virtue of the ‘anti-dissection rule’ established under Section 17(1), which states proprietorial rights conferred by registration are for marks as a whole. Section 17(2)(a), which disentitles exclusivity in respect of part of a mark registered as a whole, the petitioner has rights of exclusivity to the mark as a whole and not in respect of the ‘NOW’ part of each of the marks. However, this anti-dissection rule has a caveat as elucidated by this Court in South India Beverages Pvt Ltd v. General Mills Marketing Inc, where it was observed that while a mark is to be considered in entirety, it is possible to accord more importance or ‘dominance’ to a particular portion or element of a mark which enjoys greater prominence vis-à-vis other constituent elements of a composite mark.
The rationale of the anti-dissection rule is based upon the assumption that an average purchaser does not retain all the details of the mark, but rather the mental impression of the mark creates in its totality and, therefore, focusing on the prominent feature of a mark to decide the likelihood of confusion while ignoring the mark as a whole is held as violation of the anti-dissection rule. However, the Court in South India Beverages held that the principle of anti-dissection does not impose an absolute embargo upon consideration of constituent elements of a composite mark as a preliminary step on the way to the determination of probable customer reaction to conflicting composites as a whole. Therefore, the principle of ‘anti-dissection’ and identification of ‘dominant mark’ are not antithetical but complement each other if viewed holistically. It was emphasised that consideration of a trademark as a whole would not condone infringement where less than the entire trademark is appropriated, and thus, dominant features are significant in such cases as the consumer is likely to remember and rely on dominant features for purposes of identification of product and source rather than descriptive or generic components of a mark.
In accordance with the same, this Court observed that the consumers would obviously identify ‘NOW’ as the distinctive common feature of all the ‘NOW-centric’ marks and therefore, NOW would serve as the dominant part of the marks. Any viewer with average intelligence and imperfect recollection who were to come across another channel providing similar services with a title of which ‘NOW’ is the latter part would likely regard the channel as part of the petitioner’s repertoire or at least as having association with the NOW-family of channels of the petitioner.
Applying the reasonings mentioned above of the Bennet Coleman judgment, mutatis mutandis, to the present case, the Court observed that the impugned marks of and of Respondents are registered in the very same services as the marks of the Petitioner and due to the subsisting interest in the ‘NOW’ family of marks by the Petitioner, they are indelibly associated with the Petitioner. As a result, the Court held that the impugned marks of the Respondents cannot be allowed to continue on the register in Class 38.
By following the decision of Bennett Coleman, the Court has solidified the position that both anti-dissection and dominant feature rule can coexist with the adoption of a holistic approach when it comes to the comparison of conflicting marks. Due to such a decision, proprietors of family marks can enjoy a higher degree of protection and exclusivity of their mark when dominant elements of their marks are compared to conflicting marks. This may pose a risk of giving prominence to the rule of dominant feature over the rule of anti-dissection. Therefore, it is imperative to strike a balance between both, keeping in mind the ultimate goal of protecting the consumers, trade members and public from any likelihood of confusion or deception.
Authors: Manisha Singh and Antara Bhide
First Published by: Mondaq Here