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Authors: Isheta T Batra Batra  &  Pranav Prakash  |  Published on 23 November 2021


It is important to discuss the ‘is it trademark infringement to copy a distinctive part of a trademark?’ Or ‘is it trademark infringement to copy the ‘prefix’ or ‘suffix’ of a trademark?’ The concept of the totality of trademarks is worth addressing in this regard.

Totality of Trademarks         

An important thing to understand and know about Trademark registration is that the protection & rights are accorded to the appearance & form in which it is applied. The totality of the Trademark is what is safeguarded by the law. Sometimes a trademark is a combination of numerous features such as words, design, color scheme, shapes, etc. In such cases, the trademark exists with respect to the mark as a whole and no trademark exists exclusively with respect to the words, design, color scheme, shapes, etc. separately. In this regard, Section 15 and Section 17 of the Trademarks Act is worth being addressed.

Section 15 of the Trademarks Act states that where the proprietor of a trademark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trademarks. Further, Section 17 provides that when a trademark consists of several elements, the registration of such a trademark gives the owner the exclusive right to use the trademark as a whole and not just any part of it.

JUDICIAL PRONOUNCEMENTS DEALING WITH ‘is it trademark infringement to copy the ‘prefix’ or ‘suffix’ of a trademark?’

Furthermore, several judgments deal with the issue of the totality of trademarks. Let's have a look at some of them:

  • Corn Products Refining Co. vs Shangrila Food Products Ltd. [AIR 1960 SC 142], The Supreme Court of India - The Supreme Court, in this case, had to compare two trademarks “Gluvita” and “Glucovita”. While comparing the two it was clearly held that “in deciding a question of similarity between two marks, the marks have to be considered as a whole and not merely the component words thereof separately”

  • Amritdhara Pharmacy vs Satyadeo Gupta on 27 April 1962, The Supreme Court of India – The Court while deciding the question of deceptive similarity noted that "I do not think it is right to take a part of the word and compare it with a part of the other Word; one word must 'be considered as a whole and compared with the other word as a whole................ I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word".

  • Sun Pharma Laboratories Ltd v. Lupin Ltd & Anr. [CS (COMM) 918/2016], Delhi High Court, 19th February 2018 – While comparing the two competing trademarks “TRI-VOBIT” and “TRIVOLIB”, the Delhi High Court held that “it is a settled legal position that while comparing the trademarks, the marks have to be taken as a whole. Merely because Defendant was using a part of the mark earlier cannot be a ground to plead trademark infringement.”


  • Ultratech Cement Limited And 1 Ors vs Dalmia Cement Bharat Limited, [Suit No. 42 of 2014], Bombay High Court, 10 June 2016 – The Bombay High Court while deciding on the question of similarity between the marks ‘UltraTech’ and ‘Dalmia Ultra’ held that “the prominent or essential feature of most of the Plaintiff's registered trademarks is the word 'UltraTech' and not the word 'ultra' per se. Even when the word 'ultra' appears in Plaintiff's registered trademarks without the word 'tech', it is used mostly as a prefix and never as a stand-alone or as a prominent or essential feature. Also, it is Plaintiff's own case before the Registry that the words 'Ultra' or 'UltraTech' are not per se distinctive and are entitled to be registered as part of the trademark only because they appear in combination and particularly as part of a device or label mark. If the words 'UltraTech' or 'Ultra' are not per se distinctive and their existence is justified only because they appear in the particular combinations as depicted by the respective trademarks, there is no question of the Plaintiffs seeking to injunct others from using these words as part of the latter's trademarks.”


  • PhonePe Pvt. Ltd. v. EZY Services & Anr., Delhi High Court [CS(COMM) 292/2019], Delhi High Court, 15th April 2021 - The plaintiff claimed that its “PhonePe” trademark (which is a composite mark) is infringed by the defendant by using “BharatPe” (which is also a composite mark), which consists of the “Pe” suffix similar to the plaintiff’s trademark. Accordingly, the plaintiff sought an interim injunction against the defendant from using the “BharatPe” trademark. The Court had to decide whether there was a prima facie case of trademark infringement/passing off for issuing an interim injunction against the defendant for use of the “BharatPe” trademark?   The Court noted that ‘The whole word/mark is to be considered. An ordinary man would not split a word or name, in a trademark, into its components,  but would go by the overall structural and phonetic similarity of the marks at the nature of the goods previously purchased, or of which he has been told and which he wants to purchase. It has to be examined whether the totality of the trademark of the defendant is likely to cause deception/confusion  or  mistake  in the  minds  of  the  persons accustomed to the existing trademark of the plaintiff.’ The Court further held that ‘Exclusivity can be claimed, and infringement/passing off alleged, only in respect of the entire mark of the plaintiff, and not in respect of part thereof. The registration of the whole mark cannot confer any exclusive rights, on the holder thereof, to any part of such registered mark’

The Court, inter alia, ruled as follows with regard to the plaintiff’s claim of trademark infringement based on the defendant’s usage of the “Pe” suffix:

  • “PhonePe” and “BharatPe” are both composite marks.

  • Ordinarily, therefore, these marks cannot be dissected into “Phone” and “Pe” in the case of the plaintiff and “Bharat” and “Pe” in the case of the defendants.

  • The plaintiff cannot claim exclusivity solely over the “Pe” suffix, as no infringement can be claimed based on part of a registered trademark…”

  • By misspelling “Pay” as “Pe”, the legal position cannot change.  The plaintiff would, therefore, be as entitled to claim exclusivity over the suffix “Pe”, as it would have been, had the suffix in its trademark been “Pay”.

  • Were the plaintiff to establish that the “Pe” suffix had acquired distinctiveness, and secondary meaning, to the extent that the consuming public would invariably associate the “Pe” suffix as relating only to services provided by the plaintiff, it may,  nevertheless,  have been able to make out a case of infringement. This, however, is essentially a matter of trial. The evidence presently at hand is insufficient to come to a definitive conclusion that the “Pe” suffix would, in the public consciousness, indelibly be associated with the plaintiff’s services.  The plaintiff has been in business only since 2016, using the “PhonePe” mark.  The defendants have also claimed extensive use of their “BharatPe” mark.  This, too, inhibits the Court from arriving at any prima facie conclusion that the “Pe” suffix had acquired secondary meaning, invariably associated with the plaintiff.

  • PhonePe Pvt. Ltd. v. Resilient Innovations Pvt. Ltd., Bombay HC [Commercial Ip Suit (L) NO. 24136 OF 2021], Bombay High Court - The plaintiff made a similar claim of infringement on the same grounds as claimed in the BharatPe Case. The plaintiff claimed infringement of its trademark “PhonePe” over the defendant’s usage of the trademark “PostPe”, based on the defendant using the same suffix of “Pe” which is a part of the plaintiff’s trademark. Upon review of the plaint filed by PhonePe, the Court noted that on many occasions the plaintiff claims some sort of exclusivity or distinctiveness in a part of its trademark, i.e: “Pe”. The Court also noted that there is no exclusive trademark held by the plaintiff over the term “Pe”. Upon the Court’s observations, the plaintiff withdrew its suit.


It can be safely said that the legislation and the judicial stand regarding the principle of the totality of trademarks is clear. There have been instances where descriptive trademarks have been registered and have gotten protection. These are usually marks where businesses have managed to incorporate some form of distinctive characteristic by using misspellings, synonyms, different languages. In such light, it is important for businesses to understand that trademarks are considered in their totality and even when two trademarks are to be compared in a court proceeding, the Court will compare the two trademarks in totality and not just certain part(s). As was opined by the Supreme Court in National Sewing Thread v. James Chadwick & Bros (AIR 1983 SC 357) that "in deciding whether a particular trademark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trademark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question is to decide in such cases is to see as to how a purchaser who must be looked upon as an average man of ordinary intelligence would react to a particular trademark, what association he would form by looking at the trademark and in what respect he would connect the trademark with the goods which he would be purchasing."

However, if a business feels that a part of its trademark is so distinct that it warrants trademark protection, it must apply to get such part registered as a separate trademark under Section 15 of the Trademarks Act.


A trademark is a word, phrase, symbol, design, or a combination of these things that identifies a business’ goods or services, or maybe even the business itself. Trademarks are generally developed by businesses for consumers to uniquely identify a business, its products or its services.

Deciding on a trademark can be a tricky affair. The business has to ensure that the trademark is simple enough to be comprehended and retained in the minds of people, but at the same time, it must not be so simple and generic that no trademark protection can be accorded to it.

In this regard, Judge Henry Jacob in the case of Abercrombie Fitch v Hunting World (1976) established a well-celebrated principle of ‘Spectrum of Distinctiveness.’ The spectrum talks about a hierarchy of trademarks from the strongest to the weakest from the point of view of trademark protection:

  1. Fanciful or Coined Marks – Eg: Google, Rolex;

  2. Arbitrary Marks – Eg: Dove, Apple;

  3. Suggestive Marks – Eg: Airbus, Netflix;

  4. Descriptive Marks – Eg: Cold and Creamy;

  5. Generic Words – Eg: Water, Table.


Strong trademarks such as fanciful, arbitrary and descriptive marks are easily accorded trademark protection, while it is very hard to accord trademark protection to weak trademarks such as descriptive marks and generic words. This is where the distinctive character of a trademark becomes relevant for businesses.



The distinctive character of a trademark is very important in terms of trademark registration under the Trademark Act, 1999 (“Act”). Section 9 of the is very clear regarding the non-registrability of descriptive trademarks that lack a distinctive character and which exclusively contain indications that draw a direct reference to the products or services with respect to which such trademarks are used.


Having said that it is pertinent to mention here that there are certain undeniable commercial advantages to having a descriptive trademark, such as:

  1. Grabs the immediate attention of consumers;

  2. Immediate communication of the nature of the business and the products or services it offers;

  3. Easily comprehensible by the consumers; and

  4. Ensures easy and long-term retention of the trademark in the consumers’ minds.


Keeping in mind such commercial advantages of descriptive trademarks, businesses often resort to using synonyms, misspellings based on phonetic similarities, different languages, or composite marks to develop and register their trademark. For example, “Riso” is trademarked by a company selling rice bran oil even though the word “riso” means rice in Italian. Further, in the trademark “PhonePe”, the part “Pe” is a misspelling of the word “Pay” due to their phonetic similarity.

Since such synonyms, misspellings, usage of different languages etc. carry some amount of distinctive character, businesses are successfully able to establish a trademark in descriptive trademarks that contain such synonyms, misspellings, usage of different languages etc. However, recently, many businesses having such descriptive trademarks have now started to file infringement and passing-off suits based on the copying of such distinctive characters by other businesses.

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