Exclusive rights are only in distinctive matter of trademark, that is going to be discussed here in detail.
The 1999 act has omitted the law relating to disclaimers altogether. The 1999 act has declared that the exclusive right to use a trademark has to be viewed for the trademark as a whole. If it consists of several matters or parts within a trademark, the parts of the trademark do not have any exclusive right in them, as it shall be in the use of a mark as a whole.
Section 17(2)(a) declares that parts
- Which are not separately registered, or
- Parts which are not subject matter of separate application for registration do not have any exclusive right in respect of the matter contained in them.
Moreover, section 17(2)(b) is unequivocal in declaring that the registration of a trademark would not entail any exclusive right to the use of
- Matter comprised in a trademark which is common to trade, or
- The matter comprised in a trademark which is non-distinctive character.
In other words, in spite of the registration of such matter as forming part of a trademark there would be no exclusive right in the above two types of matter, i.e., common to trade and non-distinctive matter, and both may validly be used by others.
Difficulty of understanding exclusivity of rights:
The law in section 17 of the 1999 act has introduced imprecision of understanding of rights which will contribute to litigation and a source of dissatisfaction. A mark or part of the mark or a matter in a mark may be said to be common to the trade, when (1) it is in common use in the trade or (2) when it is open to the trade to use. Any symbol, word or get-up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or publici juris. The question whether a mark is common to the trade being a question fact, the onus of proof is on the party alleging this fact.
A feature which is common to one trade may not be so to another trade. A mark may continue to be a trademark in some countries and may become publici juris in others. A mark may be common to trade at one time and may become distinctive in course of time. There is no exhaustive list of circumstances in which a mark is said to publici juris.
What constitutes non-distinctive:
If the mark has come to be co public and is in such universal use that nobody can be deceived or induced by its use into believing that he is buying the goods of the original trader, in such a situation the right to the trademark is lost. To say that a mark has become common to the trade is another way of saying that it has ceased to be distinctive of goods of a particular trader.
Normally numeral trademarks are considered non-distinctive; by a series of cases it is now accepted that a single numeral is the weakest, but as the numerals grow to 2 figures, then to 3 and 4 figures their distinctiveness is accepted progressively. Moreover, mostly the numerals are intertwined with
Other matter when adopted as trademarks and the composite matter can mostly satisfy the requirement of distinctive character. The composite matter now faces obstruction of section 17 wherein parts of a composite mark, which are either common to trade or non-distinctive are not protected.
Automatic disclaimer in 17(2) of 1999 act:
In 1999 act, the effect in relation to exclusive rights is the same as was in the 1958 act. The only difference is that under the 1958 act the proprietor had to disclaim the right to the exclusive use of non-distinctive part of trademark and the disclaimers were entered in the register. Now section 17 serves as an automatic disclaimer. It was known that what has been required to be disclaimed as a condition of registration of trademark. The proprietor knew his exclusive rights are in non-disclaimed matter of the trademark and he could structure his affairs and avoid futile litigation.
Imprecise exclusive rights:
The difficulty now is that it is not precisely known which part of the trademark does not have exclusive rights. As such, there is no exclusive right in the parts of a trademark as now the right is only in respect of the whole of the trademark. If the parts of a trademark of “X” are copied by another Y and Y is challenged by X., Y would set up a claim that the matters copied by him from trademark of X, do not enjoy exclusive rights as they are non-distinctive parts in X’s trademark. Thus, there could be a spate of litigation in relation to every trademark that the copied matter is of “descriptive character” or “common to the trade” and as such non-distinctive. The real irritant likely to be is that neither X nor Y, would come to know their rights only after a superior court determines the same in infringement proceedings, as no proprietor may be assured of the result of litigation.
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