Trademark battle between two giants of the Indian cement industry has led to a judgement that deals with claiming monopoly for any particular part of a trademark. UltraTech Cement Limited (“UltraTech”) filed a case against Dalmia Cement Bharat Limited (“Dalmia”). UltraTech alleged that a mark “Dalmia ULTRA” infringes on their trademark. The court did not find merits in UltraTech’s alligations.

UltraTech has several registered device/label marks, such as “UltraTech Cement”, “UltraTech Cement The Engineer's Choice”, “UltraTech concrete we make good concrete better”, “UltraTech readymix”, “Ultracem”, and “UltraTech white cement Pure White Cement”, among others. As is evident, the word “Ultra” forms an important part of their marks. Hence, UltraTech attempted to claim monopoly over the word “Ultra” by alleging that “Dalmia ULTRA” infringes on their trademarks.

The judgement deals with various aspects of claiming monopoly over a part of a trademark, which are herein discussed.

A trademark may include distinctive and non-distinctive portions. As an example, in the mark “UltraTech Cement”, the word “UltraTech” may be considered distinctive, whereas “Cement” may be considered as non-distinctive. One cannot establish monopoly over a non-distinctive portion of the mark is well established. Hence, in this example, one cannot establish monopoly over the word “Cement”. In this example, even when the distinctive portion, “UltraTech” is broken down into parts, such as, “Ultra” and “Tech”, each one of the parts of a distinctive portion of the mark may be held to be non-distinctive. Hence, UltraTech could not enjoy monopoly over the word “Ultra”.

A word may be considered as non-distinctive especially when such a word is commonly used in relation to the goods/services to which the trademark is applied. An adjective is more prone to be descriptive, rather than being distinctive. The judgement reasoned that “[s]ince we are here concerned with 'cement', a manufacturer may commonly describe his goods as ultra-tough or ultra- strong. No individual trader can possibly monopolize the term 'ultra' per se. Prima facie the word cannot be distinctive of any particular trader's goods.”

Monopoly may still be established over a part of a trademark if such part has come to be associated exclusively with the owner of the trademark goods/services by reason of a long, continuous and exclusive use. In the current case however, the judgement emphasised that “the corporate identity as well as stock and goods of [UltraTech] may be said to be associated with the word 'UltraTech' but not the word 'Ultra' itself.”

Further, there are better chances of claiming monopoly over a part of a trademark, if such part is a “fancy” word (example – “VapoRub”). Additionally, to establish monopoly, such a fancy word should “[evoke] an association with the [trademark owner’s] goods by reason either of its being part of the … registered trade marks or of the extensive sales and advertisements of the [owner’s] goods.” In the current case however, the judgement asserted that “Ultra” “cannot be said by any stretch of imagination …[to be] a fancy word…It is a common English word mostly used as a prefix, …and cannot be described as a prominent or essential feature of the Plaintiff's mark, affording the Plaintiffs a monopoly of its use.”

In essence, establishing monopoly over part of a trademark cannot be ruled out. However, to establish monopoly, such part should meet certain criteria as discussed earlier.

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