Maybe There’s No Necessity For The Concept Of Trademark As A WHOLE!

 

Take this hypothetical example first. Let us consider BMW X7 as a DEVICE Mark. Now as BMW is well-known, no one would imitate it. But presume, someone starts using X7 for their products or services falling either in same or different classes. Could that be considered as an infringement/passing off? Let us say, the individual using X7 for its products or services now files for another DEVICE mark, say, X7 XYZ, and it’s been granted with a DISCLAIMER that mark to be used on ‘AS IS’ basis, considered as Whole, and no rights be given to any descriptive feature.

Let us further presume X7 becomes more known, if not well-known originating from this particular New USER, BUT, someone else now, takes or extracts XYZ from this DEVICE mark X7 XYZ, and starts using it, as the mark was registered with the DISCLAIMER that it would be considered or used as WHOLE or on ‘AS IS’ basis.

You must’ve understood by now what I’m trying to contend in this blog. Is the usage of the term DISCLAIMER or WHOLE even necessary? If Yes, isn’t it Contentious?    

For example (S. 17) says that trademark shall be considered as whole. Question is, not every mark can be given or end up acquiring a Well-Known status, as being discussed in the previous blogs, and what protocols followed (for example Section 11(6)) that are used to evaluate whether the trademark can be considered as Well-Known; and furthermore, this is also true that not every trademark, has substantial user details; and further, not every trademark ends up being used everywhere, in every town, state, nation.

Now, there are incidents wherein if there are two similar marks, and let’s say one is applied as a DEVICE mark; then, the mark would be granted with a Disclaimer as explained above. Should this continued to be technically feasible? What if the ‘Words’ inside the mark eventually acquires a reputation time down the line, whilst other marks, or maybe several other unregistered marks, used a DEVICE marks, fails to acquire the same use, Yet, has substantial usage. So, would these marks be liable to be rectified later, or, would be correct or ethical if not be allowed to be registered at all at the first place?

Trademark is a trademark, inside a Device/Label or as an Independent Word mark! Thus, my proposition and theory is:

If there are more than Two Words inside a DEVICE/LABEL, then that should be registered as a TAGLINE, OR, SLOGAN, And NOT As a Trademark; wherein, there should be a separate book for TAGLINES, OR, SLOGANS, wherein SLOGANs/TAGLINEs maybe then only be allowed to be used along with Trademarks only, or, be governed by a separate introduced section in Copyrights.

By this, what we would achieve? Maybe, we would be able to grant the Trademarks for upto Two Words (DEVICE/ WORD etc.), whilst the rest would be considered as TAGLINES or SLOGANS, governed by a Separate section, including via newly introduced Copyright Section.

Thus, one won’t be able to extract X7 from BMW X7, and both BMW and X7 would be considered as Trademarks, even separately; but if BMW comes up with an extra word in that mark, let’s say, BMW X7 TZAR; then, that would be considered as Slogan/Tagline and not Trademark alone, and, as per my understanding, there’s a huge difference between the two! It might eliminate the probability of copying, extracting, pasting, Trademarks all together. And the mark too won’t end up becoming, a sample for dissection! Whereas, SLOGANs/TAGLINEs would be comprehended with a completely different angle! And SLOGANs/TAGLINEs may then only be allowed to be used with the Trademark only, as discussed above! 

© Pranav Chaturvedi