Issue With Any Trademark Accepted With A Disclaimer! And My Dilemma Riding On-> Thomas The Train!

 

Restricting to any Demography is understandable in the Disclaimer Clause! BUT, I never understood, especially, when any trademark is considered as whole, why then restricted disclaimer clause is attributed for certain words in it, especially in the Device Mark itself? This creates an issue later, even at the time of adjudging the opposition or rectification. For the reason, that, now one is allowed to use the Mark with the Disclaimer; YET, one is not allowed to have the exclusive user rights over it, even as a whole! You can’t oppose or rectify it, YET, you can oppose or rectify it!

Thus, which section would then be applicable on it? S.17? S.28? Or, as in the earlier Blogs I wrote, when I presented my massive dilemmas about S. 17 itself, whilst giving a hypothetical example of a Case involving -> BMW X7 vs. X7; which indeed came true, as I wrote another blog while discussing the case of Indigo 6E VS Mahindra BE 6e, in which case, the latter amended their mark sub-judice to the matter to BE 6. So, S. 17 has no significance now? And as I already discussed in my earlier blogs much before when even this order came? If not, what should be the position now?

NOW, coming back to my question: Why the need to write a disclaimer, EXCEPT, in the case of Demographic Restrictions? Indeed, in case of the demographic restrictions, it is required; BUT, why put a disclaimer citing the reason that anything particular within any trademark won’t covered under the ambit of S.28? Logic? This is where my dilemma starts riding on Thomas The Train!

And this is an important question to ask! Unless, and irrespective of well-known status or not, if one cannot segregate the individual elements of the device mark, then, if in those, descriptive features are mentioned, while some other trademark is covered by those features, can that disclaimer be claimed as an implicit approval of prospective rectification? What if in case and in these other features or elements someone else is holding the exclusive rights over them? In this case, what shalt prevail? S.17, or, S.28?

Am I missing something? Should this dilemma be de-boarded from Thomas The Train?😊

© Pranav Chaturvedi