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INTRODUCTION

A trademark can be defined as a visual symbol that is put on goods sold in the form of words, symbols, or a label with the sole purpose of differentiating these goods from similar goods manufactured by others. Trademarks are not only put on products but also on services. For a trademark to be protected, it must be distinct and cause no confusion.

The Trademarks Act of 1999, governs the law relating to trademarks in India. It deals with the registration of trademarks, their protection, and infringement. Section 17(2)(b) of the Trademarks Act, 1999 states that ‘when a trademark contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered."

This section lays down that the trademark must be viewed as inseparable. This raises two important questions: first, can a proprietor claim an exclusive right over the dominant part of the whole of the trademark, and second, can a trademark be cut up into its elements for infringement? This gives birth to the Rule of Anti-Dissection in Trademark Law.

ANTI-DISSECTION RULE

A trademark consists of two components: a distinctive element (over which the trademark owner has rights) and a non-distinctive element (over which the trademark owner has no rights since it is common to the trade, descriptive, etc.). The Anti-Dissection rule is a trademark law theory that states any comparison between two potentially conflicting marks must be made in their entirety, or how the marks are perceived by consumers in the marketplace, rather than by analysing each mark separately. All of the criteria should be used to evaluate the marks. However, this does not exclude an examination of the mark's dominant and subordinate qualities in order to ascertain which elements have the greatest impact on customers. This principle is founded on the idea that the combined effect of a composite mark will be more impressive to a typical prospective consumer than the sum of its parts.

Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals is where this principle was originally put forward. When the defendant's use of the allegedly infringing mark is demonstrated to be "in the course of trade," the court ruled, the question of whether there has been an infringement is decided by comparing the two marks. It's important to keep in mind that the inquiry's ultimate goal is to determine whether or not the defendant's mark, taken as a whole, is confusingly similar to the plaintiff's registered mark.

In a very recent case of PhonePe v. BharatPe, the Delhi High Court applied the rule of anti-dissection. It stated that the plaintiff has not registered ‘PhonePe’ as two different marks rather it must be seen as a whole. The marks ‘PhonePe’ and ‘BharatPe’ cannot be dissected for suit for infringement as the word ‘Pe’ is merely misspelling of the word ‘Pay’ and the plaintiff cannot claim exclusivity over it. 

In the case of Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd. where it was held that the defendant’s trademark PONTOBLOC and the plaintiff’s trademark PANTODAC are deceptively similar, the Hon’ble Supreme Court laid down guidelines for comparison of trademarks:

1. "The trademark must be considered as a whole. It is not right to take part of the trademark and compare it with part of the other trademark.

2. No meticulous or letter-by-letter comparison is required. Side-by-side comparisons are not the correct test.

3. A comparison should be made from the point of view of a person of average intelligence and imperfect recollection.

4. "The overall structural, visual, and phonetic similarity and similarity of the idea in the two marks, as well as whether there is a reasonable likelihood of confusion, should be considered."

The Supreme Court ruled in the landmark case of Amritdhara Pharmacy v. Staya Deo Guptathat "the usage of the word 'dhara,' which literally means 'current or stream,'" "was not by itself definitive of the subject." The Supreme Court went on to determine that consumers would be confused by the use of the names "Amritdhara" and "Lakshmandhara" for identical items due to "the overall structural and phonetic resemblance" of the two words. The Supreme Court affirmed the anti-dissection principle from the perspective of the consumer, explaining that "an unwary purchaser of average intelligence and imperfect recollection would not, as the High Court assumed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as "current of nectar" or "Current of Laxman."

It was held in the case of Registrar of trademark v. Ashok Chandra Rakhit, a distinct and unique label that is registered in entirety does not grant the owner of the trademark any legal right to use any part of the mark separately apart from using the mark as a whole.  

The anti-dissection rule is grounded in the idea that a typical consumer will evaluate a composite mark as a whole, rather than its individual elements. That's why it stresses the importance of not engaging in 'technical gymnastics' to differentiate between seemingly similar marks.

RULE OF ANTI-DISSECTION AND DOMINANT MARK TEST

The Anti-dissection test and the dominant mark test are the dominant determination tests in situations where there is a deceptive likeness between composite marks (marks consisting of more than one element). While the anti-dissection test requires comparisons of marks in their entirety, the dominant mark test allows marks to be broken down into their component parts in order to determine whether or not the defendant's use of its mark infringes on the plaintiff's. These two procedures may appear to be at odds with one another, but the latter actually facilitates the former's use.

In the case of South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., it was observed that "While a mark must be examined in its totality, it is allowed to assign greater or lesser value or "dominance" to a particular piece or element of a mark in the case of composite marks. As a result, a ‘dominant mark’ is a component of a composite mark that has a higher prominence than the other constituent pieces." The Court found that both the 'HAAGEN' and the 'DAZS' parts of the Plaintiff's mark are equally dominant and deserving of adequate protection under the law. An injunction has been granted against the defendant’s use of the trademark D'DAAZ. Taking a closer look at the conflicting marks dominating element as a first step is not considered a breach of the anti-dissection rule, but rather a useful tool to gauge how customers are likely to respond to the marks in their entirety. Thus, these two tests are not at odds with each other but rather reinforce each other. When deciding whether or not a trademark has been infringed, a court may look at whether or not the defendant replicated the trademark’s most distinctive feature or not.

CONCLUSION

In conclusion, it can be said that in order to provide an accurate comparison between two marks, the entirety of each mark must be taken into account. Given the lack of a uniform method for making this determination, courts have frequently departed from the anti-dissection rule in favour of a rule of dominant feature. The courts in some cases have preferred the rule of anti-dissection over the rule of dominant mark whereas in other cases it has been the other way around. The opinion of the Judiciary on the rule of anti-dissection in trademark law has been conflicting. 

Reference:

1. https://www.algindia.com/article-can-a-composite-trademark-be-dissected-into-its-constituent-elements-to-determine-infringement/#:~:text=In%20cases%20of%20trademark%20infringement,deceptive%20similarity%20between%20the%20marks.

2. https://www.lakshmisri.com/insights/articles/rule-of-anti-dissection-v-rule-of-dominant-feature-a-legal-conundrum/

3. https://www.theippress.com/2021/06/16/phonepe-vs-bharatpe-anti-dissection-vs-dominant-mark-test/

4. https://thecompany.ninja/anti-dissection-theory-under-trademark-law-in-light-of-deceptive-similarity-confusion/

5.https://thecompany.ninja/anti-dissection-theory-under-trademark-law-in-light-of-deceptive-similarity-confusion/