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COMPARING COMPOSITE MARKS: RULE OF ANTI-DISSECTION IDENTIFYING DOMINANT MARKS

August 1, 2024

*Mr. Dixit Parakh

The recent pronouncement by the Delhi High Court established that where a comparison of the two composite marks is in question, the rule of anti-dissection is applicable. The proprietor of such a composite mark cannot claim monopoly over a word included in that composite mark, which is in extensive general use. If desires so, the proprietor of the said composite mark must reflect the highest degree of threshold in delivering distinctiveness, such that the word has acquired a secondary meaning while displacing the primary descriptive meaning. This could not be achieved by merely reflecting huge sales volume and financial figures.

APPLICATION, OPPOSITION AND FINDINGS:

Football Association Premier League Ltd. (FAPL) filed for a registration of a device mark “PREMIER LEAGUE WITH DEVICE OF TIGER WITH FOOTBALL” containing a lion wearing a crown and standing over a football in class 25 as ‘purposed to be used’. Premier SPG and WVG Mills Pvt. Ltd. (PSWM) filed the notice of opposition citing extensive prior use and multiple registrations in various classes containing the word ‘PREMIER’. PSWM holds a registration for a device mark ‘premier mill,’ written in a particular style and fashion along with a flower element embedded over the letter ‘I’ in class 25.

PSWM oppose the registration on grounds that the mark ‘PREMIER LEAGUE’ is neither distinct nor distinguishable, having phonetic, structural, and visual similarities that may cause confusion and deception leading to riding over the reputation and goodwill of PSWM. Further, FAPL is not the proprietor of the mark and that the mark has no exclusive use is only ‘purposed to be used’. The mark of PSWM shall be protected as a well-known mark against similar marks and the bad faith of the FAPL must be considered while looking into the registration.

FAPL, in its counter statement, contended that FAPL is the organizing body of the ‘BARCLAYS PREMIER LEAGUE’ holding and using various trademarks containing a device mark. FAPL has secured multiple registrations in various countries for the mark ‘PREMIER LEAGUE’ and is well-known around the globe. Refuting the contentions made by PSWM, FAPL stressed that the documents submitted by PSWM are random sales invoices and incorporation certificates. The word ‘PREMIER’ is generic and hence no one can have an exclusive right to use a generic word.

The Registrar convinced that the previous registration of the mark ‘BARCLAYS PREMIER LEAGUE’ (previous mark) was valid up to 2017 and FAPL was one of the parties, wherein FAPL is no longer associated with the Barclays Club. Recognizing the concept of ‘crowded field’ by the Hon’ble SC in Corn Products vs Shangri-La Food Products Ltd., the registrar considered the search report of the word ‘PREMIER’ by FAPL and held that ‘PREMIER’ is a generic word, and no one can have a monopoly over such word. The mark ‘PREMIER LEAGUE’ cannot be dissected into ‘PREMIER’, “LEAGUE’ and ‘the device of LION wearing a crown along with football’ and then held for comparison. The mark must be considered in its totality. The marks appear to be clear and more strikingly dissimilar to the naked eye than any similarity between parts of the mark.

CONCEPT OF ‘CROWDED FIELD’:

The concept of ‘crowded field’ means the presence of other registered trademarks similar to the applied-for mark on the trademark registry. Such coexistence of similar marks by different proprietors on the registry entails that the mark is intrinsically weak in its ability to prevent others from using the mark. In the present case, there are many proprietors holding registration for the marks containing ‘PREMIER’ as an element.

APPEAL TO THE COURT:

Aggrieved by the findings of the registrar, PSWM filed an appeal against the order at the Delhi H.C. In its appeal, PSWM contended that FAPL failed to provide evidence suggesting the use of a mark ‘PREMIER’ by other proprietors, wherein PSWM enjoys prior and extensive use. Dissecting the mark of FAPL, PSWM contended that the mark ‘PREMIER LEAGUE’ has only the first part ‘PREMIER’ being distinct, while ‘LEAGUE’ is a common sports and games term. The dominant part ‘PREMIER’ is used in identical goods having identical trade channels. PSWM stressed that the registration of the previous mark had lapsed in 2017 and the present mark is not similar. It argued that the disputed marks need only to have resembled to such an extent that it causes confusion or is likely to deceive.

Refuting the arguments of PSWM, FAPL stated that ‘PREMIER’ is a generic word and cannot be exclusively held by a single person or proprietor. The concept of ‘crowded field’ is correctly applied by the registrar by highlighting the presence of other trademarks containing ‘PREMIER’ in the TM registry. The mark cannot be dissected into ‘PREMIER’ and ‘LEAGUE’ and shall be viewed as a whole, the lion wearing a crown along with a football is distinct. PSWM never oppose the registration of the previous mark. The registrar highlighted the dissimilarities between the marks, emphasizing the presence of a flower above the letter ‘I’ in the PSWM’s mark, which is not presented in the FAPL’s mark. There is no separate registration for the word ‘PREMIER’ and is only registered as a device mark. PSWM failed to prove that ‘PREMIER’ acts as a source identifier. Lastly, FAPL stressed that dissecting the composite mark and examining a portion of a mark is not permissible where the marks compared are dissimilar when viewed as a whole.

JUDGEMENT BY THE COURT:

The court held that there is no descriptive similarity between the marks and the PSWM has no registration in the word ‘PREMIER’. Applying the rule of anti-dissection and the identification of the dominant mark as held in Vasundhara Jewellers Pvt. Ltd. vs. Kirat Vinodbhai Jadvani and Ors, the court stressed that in scrutinizing the dominant part of the trademark for comparing the conflicting marks to determine deceptive similarity, the mark must be viewed as a whole. Mere examination of the portion of the marks does not suffice the conditions.

The court favours the findings of the registrar that the mark ‘PREMIER’ cannot be served and dissected from ‘PREMIER LEAGUE’, referring to the category of a league, deriving its context from it. PSWM failed to prove extensive use of the word ‘PREMIER’. Furthermore, ‘PREMIER’ being a generic word, has been extensively used by different organizations, meaning no single proprietor can enjoy a monopoly over generic words that have been in extensive use.

The Anti-Dissection Rule:

This rule is applicable when comparing the composite marks. It states that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks into their parts for comparison. The reasoning behind this rule is that the commercial impression of the composite mark on the consumer is created by the mark as a whole and not by its parts. An average consumer does not retain all the details of the mark, but rather the mental impression created in its totality. The points of similarity are more important than the minor points of difference.

The court stressed that the threshold for achieving the secondary meaning of the mark while displacing its original meaning is very high and PSWM has not presented any evidence to achieve the same. Such a threshold cannot be achieved by merely reflecting invoices, financial figures, and sales, but rather the arrangement of the multiple elements tied together to get a wholesome composition. PSWM failed to convince the court because they had not initiated any opposition action against the previous registration.

Threshold for achieving secondary meaning:

For the mark to achieve secondary meaning, it is essential to reflect the distinctiveness of the mark, which lies in arranging various elements of the mark to achieve a wholesome composite, i.e, in the present case ‘PREMIER’ written in a particular style and fashion along with the flower device embedded in the mark. The court stressed that mere evidence of invoices, financial figures and sales does not suffice the degree of distinctiveness that needs to be achieved. The secondary meaning must be shown to have displaced entirely the primary descriptive meaning of the mark. The proprietor must show that the goods bearing the mark must be identified with his goods exclusively.

CONCLUDING REMARK:

The trademark proprietors holding composite marks must understand the rule of anti-dissection and the concept of crowded fields. While holding the registration of a weak trademark, the proprietor shall incorporate innovation and creativity to defeat the wholesome purpose of the anti-dissection rule. It has been argued that the proprietor shall focus on the differences of the mark and work towards achieving distinctiveness with the differences. The right in a device mark does not entitle the proprietor to seek exclusivity in the word used in such device mark. The exclusive worldwide registrations in various continents spanning multiple countries reinforce the contentions concerning worldwide and extensive use.

REFERENCES:

  1. Football Association Premier League Ltd. vs. Premier SPG and WVG Mills Pvt. Ltd., 2020 SCC OnLine Del 1048.
  2. Khunthong, E. and Nanakorn, P., 2022. Determining the similarity of trademarks: the application of the anti-dissection rule (Doctoral dissertation, Thammasat University).
  3. Corn Products Ltd. vs. Shangri-La Food Products Ltd., (2009) 3 SCC 1.
  4. Franklyn, D.J., 2004. Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law. Hastings lJ, 56, p.117.
  5. Vasundhara Jewellers Pvt. Ltd. vs. Kirat Vinodbhai Jadvani and Ors., 2018 (3) GLR 1950.
  6. Khunthong, E. and Nanakorn, P., 2022. Determining the similarity of trademarks: the application of the anti-dissection rule (Doctoral dissertation, Thammasat University).
  7. Roberts, A.J., 2018. Trademark Failure to Function. Iowa L. Rev., 104, p.1977.
  8. Fitz-Gerald, D.G., 1979. Third-Party Registrations: An Evidentiary Problem in Trademark Opposition Proceedings. Emory LJ, 28, p.825.
  9. Dogan, S.L. and Lemley, M.A., 2006. Grounding trademark law through trademark use. Iowa L. Rev., 92, p.1669.

Author:
* Mr. Dixit Parakh
L.L.M., Jagiellonian University, Jodhpur.

Disclaimer: The opinions expressed in the article are the personal opinions of the author. The facts and opinions appearing in the article do not reflect the views of the Alliance Centre for Intellectual Property Rights (ACIPR) and the Centre does not assume any responsibility or liability for the same.