In India, it is common for trademarks to be registered along with disclaimers, especially when the mark contains descriptive or non-distinctive elements. This often leads to uncertainty among trademark proprietors regarding the extent of protection available when a third party copies or uses the same disclaimed portion. The central question that arises is whether the presence of a disclaimer restricts enforcement options. Under Indian law, the answer is no, a disclaimer does not prevent legal action when the overall mark is copied or when such use results in confusion or dilution of the goodwill associated with the registered trademark.
Meaning and Legal Basis of a Trademark Disclaimer
A disclaimer is a statement included in a trademark registration to clarify that the proprietor does not claim exclusive rights over a particular element of the mark. This most commonly occurs when the mark consists of generic words, descriptive expressions, geographical names, common shapes, or colour elements. The purpose is to ensure that no single trader monopolises language or graphical representation that others may reasonably need to use in the course of trade.
The statutory foundation for disclaimers lies in Section 17 of the Trade Marks Act, 1999, which provides that trademark protection applies to the mark as a whole. Where a mark contains non-distinctive elements, the Registrar may direct that no exclusive right shall extend to such element considered separately. For instance, in a mark like “SUN FRESH MILK” for dairy products, a disclaimer may be imposed on the word “MILK” because it directly describes the goods.
However, the purpose of the disclaimer is clarificatory, not restrictive. It does not remove the disclaimed portion from the mark, nor does it make it freely usable in any context.
Effect of a Disclaimer on Enforcement Rights
A common misconception is that once a disclaimer is imposed, the trademark owner loses all rights over that particular word or feature. On the contrary, the rights of the proprietor continue to extend to the trademark as a whole, and the disclaimed portion does not become public property in a manner that allows competitors to copy it in a confusing or deceptive manner.
The Supreme Court, in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558, clarified that a disclaimer does not affect the rights in the mark as a whole.
Thus, even where a word is disclaimed, an infringer cannot adopt the same word in a similar style, layout, label, packaging, or trade dress if such use leads to consumer confusion or misrepresentation.
Role of Trade dress and Overall Impression
Indian courts assess infringement based on the overall commercial impression of the marks. This includes visual appearance, phonetic similarity, packaging, colour scheme, and market positioning. The various judgements of the Hon’ble Supreme Court and Bombay High Court hold that copying the packaging and overall get-up, even where common elements are present, can amount to passing off further, even descriptive or common words may, over time, acquire secondary meaning, making them distinctive to a particular trader. Once such secondary meaning develops, copying the element even if disclaimed can mislead consumers.
For instance a business owns the registered trademark “GREEN HARVEST ORGANIC” for agricultural products, with a disclaimer on the word “ORGANIC”. Another trader launches “PURE HARVEST ORGANIC”, using similar green and brown colour tones, leaf imagery, packaging style, and font.
Even though “ORGANIC” is disclaimed, the use of the word along with the similar trade dress and branding elements may create a misleading association in the minds of consumers, leading them to believe that the products emanate from the same source. This is actionable as trademark infringement and passing off.
Enforcement and Available Remedies
When a competitor begins to use the disclaimed portion of a registered trademark in a manner that results in confusion with respect to the origin of the goods, the trademark proprietor can resort to enforcements under: (i) the statutory action for infringement under the Trade Marks Act, 1999, and/or (ii) a common law action for passing off, which protects goodwill irrespective of registration.
Infringement Action Under Section 29
Even though the registration contains a disclaimer, the proprietor may file a suit for infringement if the impugned mark, when viewed as a whole, is identical or deceptively similar to the registered mark. The focus of the court remains on the overall structural, phonetic, visual and conceptual impression, rather than on the disclaimed portion in isolation. The assessment also considers the class of consumers, the nature of the goods, and the market conditions under which the products are sold.
Under an infringement claim, the plaintiff does not need to prove intention to deceive; it is sufficient to demonstrate the likelihood of confusion. Where similarity is apparent, the burden may shift to the defendant to justify the adoption of the impugned mark. If the defendant cannot provide a bona fide explanation, courts are inclined to infer dishonest adoption, especially when the defendant’s packaging, colour scheme, or overall scheme suggests an attempt to benefit from the plaintiff’s goodwill.
Passing Off as an Alternate and Independent Remedy
Even if the disclaimed portion is descriptive or commonly used in the trade, the proprietor may rely on the remedy of passing off, which is available irrespective of whether the trademark is registered. A passing off action requires proof of:
- Goodwill or reputation of the plaintiff’s mark;
- Misrepresentation by the defendant leading consumers to believe that the defendant’s goods are associated with the plaintiff; and
- Damage or likelihood of damage to the plaintiff’s goodwill.
This remedy becomes particularly valuable where the disclaimed element has acquired secondary meaning that is, where consumers have come to associate even the previously non-distinctive term or feature with the plaintiff’s brand. In such cases, copying the disclaimed element, along with trade dress or brand presentation, may constitute misrepresentation sufficient to sustain a passing off claim. This ensures that the plaintiff is protected not merely as a matter of registration, but as a matter of commercial reputation.
Author’s Note
The presence of a disclaimer in a trademark registration should not be misunderstood as a surrender of rights or an invitation to imitation. Indian trademark law maintains a careful balance between protecting fair commercial expression and preventing unfair appropriation of reputation. While descriptive or generic terms cannot be monopolised in the abstract, their role in shaping consumer perception and brand identity cannot be ignored. Where the adoption of a disclaimed element, coupled with visual, phonetic, or marketing similarities, results in consumer confusion, the law equips proprietors with both statutory and common law remedies to safeguard their goodwill.
The true inquiry in such disputes remains grounded in the realities of the marketplace: how the average consumer perceives the competing marks, and whether the defendant’s conduct amounts to riding on the established reputation of another. In this respect, the enforcement regime continues to recognise that trademarks serve not merely as names or symbols, but as commercial assurances of origin, quality, and trust.
If you’ve registered a trademark with a disclaimer and are unsure how it affects your ability to enforce your rights, you’re not alone—many brand owners face the same challenge. The reality is that disclaimers don’t strip away your protection; they simply define the scope of exclusivity. When another business starts using your disclaimed term in a confusingly similar way—especially with similar packaging, visuals, or overall brand impression—you still have strong legal remedies available under Indian law.
At R.K. Dewan & Co., we understand the nuances of trademark enforcement, disclaimers, and brand protection. As a leading Intellectual property law firm in India, our team combines decades of experience with practical legal strategy to help clients safeguard their trademarks, prevent misuse, and preserve their hard-earned goodwill. Whether you’re looking to assess infringement risks, take enforcement action, or build a more defensible trademark portfolio, we can guide you every step of the way.
Don’t wait until imitation starts eroding your reputation—protect your brand now.