Introduction:
The Rule of Anti-Dissection and The Rule of Dominant Feature often accompany each other when discussed in the context of trademark infringements. These two rules are among the most commonly used in determining possible trademark infringements and are notable because, throughout legal history, they have often been seen as antithetical to each other, leading to many wrongly drawn conclusions. At the very onset of this article, it is therefore important to establish that the principles of ‘anti-dissection’ and the identification of ‘dominant feature’ are not antithetical to one another and, if viewed holistically, rather complement each other.
Understanding Trademarks and Infringements:
At this juncture, it is important to understand what is meant by trademarks and their infringements. Trademarks are source identifiers of commodities manufactured by various traders in the market and help these traders distinguish their products and services from one another while protecting a company’s goodwill and value. Trademarks can look like a mark, pattern or a shape or could be a combination of words which help consumers easily identify the brands they may be looking for. Trademark infringement therefore can be injurious to an enterprise’s reputation and profits. If two trademarks are similar enough, the confusion caused by similarity may make a consumer buy commodities or services they don’t usually prefer. Therefore over the years judges have paid extra attention on preventing trademark infringements.
The Rule of Anti-Dissection:
The rule of Anti-Dissection has been comprehensively discussed in the case of Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited by the Supreme Court of India. The rule states that a trademark is not to be dissected into parts or each element meticulously scrutinised and distinguished from the other; instead, it is to be taken as a whole and the overall similarity or dissimilarity is to be considered. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts.
For example, in Corn Products Refining Company v. Shangrila Food Products Limited, the Supreme Court dealt with the issue of trademark registration, where M/s. Shangrila Food Products applied for the mark “Gluvita” and faced objections from M/s. Corn Products, the owner of “Glucovita.” The Deputy Registrar initially found no visual or phonetic similarity between the two marks. However, the Supreme Court reversed this view, stating, “It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. Apart from the syllable ‘co’ in the appellant’s mark, the two marks are identical.”[i] This means that “Glucovita” is not dissimilar to “Gluvita” merely because it contains an extra syllable (“co”) and differs visually or phonetically by a small margin. When the marks are considered as a whole, both “Glucovita” and “Gluvita” are deceptively similar, and an elemental difference does not make them distinct.
Even when dissimilarity exists by large margins, the rule of anti-dissection prevails. For example, in the case of Amritdhara Pharmacy vs. Satya Deo, the appellant opposed the application for “Lakshmandhara” to be used as a trademark on the grounds that it was similar to the appellant’s mark “Amritdhara,” and both trademarks occupied the same trade arena. It was held that “a critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names, considering the nature of the medicine he is looking for, with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trademark is the whole thing – the whole word has to be considered.”[ii]
The case of National Sewing Thread Co. Ltd., Chidambaram vs. James Chadwick and Bros Ltd. further reaffirms the examples stated above by stating that “a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trademark… What the Registrar has to see is whether, looking at the circumstances of the case, a particular trade mark is likely to deceive or to cause confusion.”[iii]
The Rule of Dominant Feature:
The Rule Of Dominant feature, simply put, asks an examiner to focus on the prominent or most striking parts of a mark and compare it with the other mark in question. This definition on the face value, seems to contradict the rule of anti dissection. However , in M/S. South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr this misconception of face value contradiction was dealt with. It was held that “An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains. [Emphasis Supplied] The view of the author makes it scintillatingly clear, beyond pale of doubt, that the principle of ‘anti dissection’ does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark. The said elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, the principle of ‘anti- dissection’ and identification of ‘dominant mark’ are not antithetical to one another and if viewed in a holistic perspective, the said principles rather complement each other.”[iv]
For example, the supreme court of India in M/S. South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr referred to the decision of the United States Court of Appeals for the Federal Circuit where a conflict between two trademarks namely ‘JOSE GASPAR GOLD’ and ‘GASPAR’S ALE’ arose. The court was of the opinion that the word GASPER acted as the prominent feature in both the marks and could possibly deceive a consumer into buying either. “Relevant would it be to note that the defendant in the said case urged that the approach of splitting of the marks was in violation of the anti-dissection rule. The said contention was repelled by the Court and it was pertinently observed that there was no violation of anti-dissection rule because the marks were in any way examined in entirety, and each individual term in the marks were given more or less weightage depending on the overall impression it appeared to create. The Court was of the view that both marks convey the commercial impression that a name, GASPAR, is the source of related alcoholic beverages, tequila or ale. In other words, the commercial significance of ALE in the registered mark ‘GASPAR’S ALE’ and JOSE and GOLD in appellant’s mark ‘JOSE’S GASPAR GOLD’ assumed less significance in the opinion of the Court”[v]
Similarly in Eaton Allen Corp. v. Paco Impressions Corp, The plaintiff manufactured coated paper under the trademark “Super-Ko-Rec-Type,” while the defendant used similar marks “Super Type” and “Super Type-7.” The defendant argued that the common terms were not significant parts of the plaintiff’s trademark and were not protectable. “The court held that the consideration of a trademark as a whole does not preclude infringement where less than the entire trademark is appropriated.”[vi]
Conclusion:
Thus, it can be said that the Rule of Dominant Feature further strengthens the Rule of Anti-Dissection instead of being antithetical to it. The Rule of Anti-Dissection asks an examiner to judge beyond elemental differences. As observed by Parker J. in Re Pianotist Co.’s Application: “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks.” The Rule of Dominant Feature reinforces the words of Justice Parker by acting as a preliminary step in the process of broadly and consciously determining the nature of the trademark as a whole.
[i] Supreme Court Of India, Corn Products Refining Co. vs Shangrila Food Products Ltd. 8 October, 1959
[ii] Supreme Court Of India, Amritdhara Pharmacy vs Satyadeo Gupta, 27 April, 1962
[iii] Supreme Court Of India, National Sewing Thread Co. Ltd vs James Chadwick & Bros. Ltd, 7 May, 1953
[iv] Delhi High Court, M/S. South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr., 13 October, 2014
[v] Ibid
[vi] Ibid
References
- Supreme Court Of India, Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited , 26 March, 200; Equivalent citations: AIR 2001 SUPREME COURT 1952, 2001 (5) SCC 73, 2001 AIR SCW 1411, 2001 CLC 564 (SC), 2001 CORLA(BL SUPP) 187 SC, 2001 (2) LRI 292, 2001 (1) COPYTR 288, 2001 (3) SCALE 98, (2001) 4 JT 243 (SC), 2001 (4) SRJ 447, 2001 (1) UJ (SC) 669, (2001) 2 GUJ LR 1419, (2001) 2 GUJ LH 53, (2001) 2 SCJ 553, (2001) 3 SUPREME 1, (2001) 2 RECCIVR 583, (2001) 4 ICC 558, (2001) 3 SCALE 98, (2001) WLC(SC)CVL 438, (2001) 2 CIVLJ 617 – https://indiankanoon.org/doc/1114158/
- Delhi High Court, M/S. South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr., 13 October, 2014 – https://indiankanoon.org/doc/42490190/
- Supreme Court Of India, Corn Products Refining Co. vs Shangrila Food Products Ltd. 8 October, 1959;Equivalent citations: AIR1960SC142, (1960)62BOMLR162, [1960]1SCR968, AIR 1960 SUPREME COURT 142, 1960 (1) SCR 968, 1960 SCJ 509, 1960 MADLJ(CRI) 418, 1962 BOM LR 162- https://indiankanoon.org/doc/1883538/
- Supreme Court Of India, Amritdhara Pharmacy vs Satyadeo Gupta, 27 April, 1962; Equivalent citations: 1963 AIR 44- https://indiankanoon.org/doc/368264/
- Supreme Court Of India, National Sewing Thread Co. Ltd vs James Chadwick & Bros. Ltd, 7 May, 1953; Equivalent citations: 1953 AIR 357, 1953 SCR 1028, AIR 1953 SUPREME COURT 357, 1956 BOM LR 21- https://indiankanoon.org/doc/1233360/
Authored by: Aastha Saxena, 1st Year B.Com LLB Student, OP Jindal Global University
