The registration of a label/mark under the Trade Marks Act, 1999 does not confer exclusive rights to individual words within the mark, unless separately registered, and the distinctive elements of the mark must be considered in their entirety.

BADAR DURREZ AHMED, J.

1. These appeals raise common issues and arise out of the common judgment dated 31.05.2016 delivered by a learned Single Judge of this Court in IA No. 21931/2014 in CS (OS) 3378/2014 and IA No. 14073/2013 in CS (OS) 1712/2013. The appellants before us in these appeals were the defendants in the said two suites, which were filed by the respondent. The applications referred to above were under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as ‘the CPC’), wherein the respondent/plaintiff had sought ad interim injunction against the appellants herein restraining them from using the word ‘VARDHMAN’ as a part of their trade mark or their corporate name. We may point out that these two suits were filed in 2013 and 2014 as mentioned above. However, there was no injunction granted by the learned Single Judge till the impugned judgment which was delivered on 31.05.2016. It may be also relevant to note that immediately thereafter the present appeals were filed and the Vacation Bench, on 10.06.2016, stayed the operation of the impugned judgment. Prior to that, on an application moved by the appellants, the learned Single Judge made the order effective from 11.06.2016.

2. The undisputed fact is that the respondent has a registered mark (a label mark) which is to the following effect:-

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The said mark was registered in Class 37 for building, construction, repair and allied services. According to the respondent, they have been in the business of construction and real estate since 1980. The mark was registered with effect from 22.06.2006.

3. The appellants’ case is that they have been using the word ‘VARDHMAN’ as part of their corporate names, which are – ‘Vardhman Estates and Developers Private Limited’, ‘Vardhman Buildtech Private Limited’, ‘Vardhman Realtech Private Limited’ and ‘Vardhman Infradevelopers Private Limited’. They have also used the word ‘VARDHMAN’ along with their logo, which is given below:-

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4. The learned Single Judge, after having heard the counsel for the parties, allowed both the applications filed by the respondent and, inter-alia, restrained the appellants from using the mark/brand name ‘VARDHMAN’ or ‘VARDHMAN PLAZAS’ or the corporate name ‘VARDHMAN’ or any other mark which was identical or deceptively similar to the respondent‘s registered ‘VARDHMAN’ label mark which include the words ‘VARDHMAN PLAZAS’.

5. The entire controversy before us was whether the respondent could claim exclusivity over the word ‘VARDHMAN’, which is the name of Lord Mahavir. It was the case of the appellants that nobody could monopolize and claim exclusivity over the word ‘VARDHMAN’ and that the registration of the respondent‘s trademark was in respect of the entire label. It was further contended that, if at all, the respondent could claim exclusivity over part of the label mark, it could only do so in respect of the words contained therein together, namely, ‘VARDHMAN PLAZAS’. No exclusivity could be claimed with regard to the part of the words and, in particular, ‘VARDHMAN’, which has commonly been used in several businesses not restricted to real estate business. It was also submitted by the learned counsel for the appellants that there are over 300 companies registered with the Registrar of Companies whose corporate names include the word ‘VARDHMAN’. Therefore, it was contended that the respondent cannot claim exclusivity over the word ‘VARDHMAN’. The learned counsel for the appellants also made submissions based on Section 17 of the Trade Marks Act, 1999 (hereinafter referred to as ‘the said Act’).

6. The learned counsel for the respondent, however, contended that the registration of the label/mark, which includes the words ‘VARDHMAN PLAZAS’ would entitle them to claim exclusivity over the distinctive element of the mark which, according to him, was ‘VARDHMAN’. Strong reliance was placed on Section 29(9) of the said Act. Reliance was a