This article is written by Gaurav Kumar, an undergraduate law student of Surendranath law College (University of Calcutta).
We are living in a society where faith and belief exist in the things that are perceived to be of good quality. The quality products have created an image in the mind of the consumers that lead them to be a loyal customer. The advertisements, when coming on the television screen or street flex banners, remind the customer of the brand-image of that product or services they render in the market. The owner of the brand spends millions of money on getting a reputation and popularity in local as well as global markets. In the era of cut-throat global market competition, the “well-known trademarks” helps to identify a sign or symbol for the specific brand in the global markets for maintaining the reputation and consumer faith they have received. The proprietor of the registered trademark spends a huge amount of money for the sake of recognising their brands as highly reputed and have their marked strong presence in the customer in the competent court of law.
The motive of the proprietor to establish the brand name as “well-known trademarks” is not only to protect the brand name from malicious infringers but also to prohibit the intentional opportunist person from copying the trademark name in respect of their goods and service. The recognition of a “well known” trademark is not from the date it is registered but it exists from the date from when the trademark is widely known. In this article, we will draw brief aspects of “well-known trademarks” the evolution of laws and legalities in India and the global world as well.
Concept of well-known trademark
The term “well-known trademark” was first coined in the Paris Convention for Protection of Industrial Property in the year 1883, where the guidelines for the protection of well-known trademarks were discussed but didn’t lay down any conclusions. Henceforth, it was left out on the signatory countries to decide their own regulations for the registration of such trademarks. Article 6 of the original version of the Paris Convention set up the general principle of territoriality with respect to the protection of the trademark. It means that the trademark registration in one country doesn’t provide the exclusive proprietary of the same trademark in other nations. Under the Paris Convention, the above obligation was only applicable to the goods having an identical name or similarity. The members were open to expanding it for different goods.
After the Paris Convention, the term was discussed in Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as TRIPS) in the year 1995, where the standards for the protection and enforcement of the well-known trademark was set up under Article 16 (2) and Article 16(3) of the TRIPS Agreement. Article 16(2) takes the single factor of being the knowledge of the trademark in the relevant sector for the member countries in order to determine a well-known trademark whereas Article 16(3) determines the provision when the trademark having dissimilar name can be protected. Such provisions include- a) The use of a well-known trademark for different goods/service should indicate a connection between the two goods and services, and b) the interest of the proprietor of that trademark is likely to be damaged by such use. All member countries signatory to the TRIPS Agreement were bound to protect the famous marks of the similar or dissimilar trademark with satisfying the aforementioned criteria.
Today, almost every country has its own regulation for its “well-known trademark”.
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The Indian position on the term “trademark” was having its reference in Section 478 of the Indian Penal Code, 1860 which was amended by the Indian Merchandise Marks Act, 1889. Today the term “well-known trademark” finds its place in Section 2(ii)(zg) of the Indian Trademark Act, 1999 as:
“a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services”.
In India, before the legislation came into existence, the recognition of a well-known trademark was over the discretion of the courts or tribunals, whether they considered the trademark as well-known or not. However, it led the proprietor through a long way of contesting adversarial positions before the court of law. With the existence of appropriate legislation, the proprietor of the trademark can now directly approach the Trademark Registry for the purpose of getting their products/services recognised as “well-known trademarks”.
Every country across the world has its own trademark legislation for the recognition and protection of well-known trademarks. In India, the well-known trademarks are protected and regulated through the existing Trademark Law, 1999 and the Trademark Rules of 2017.
- The Trademark Rules 2017. (Rule 124)
The Trademark Rules, 2017 is the latest version of the rules in India for the registration of trademarks. This rule provides the trademark owners to approach the Trademark Registry for the purpose of recognising the “well-known trademark”. It also sets the criterion for the determination of well-known trademarks through a separate application. Any person seeking the determination of a well-known trademark may make an application before the registrar on payment of Rs.1,00,000/- in ™-M form. Rule 124 provides the granting of a trademark the status of “well-known” on a request in form of an application before the registrar. Before the existence of these rules, a trademark was provided with the mark of well-known after a chain of proceedings as an adversarial position before the court of law or appropriate tribunal.
- Trademark Act, 1999
The TRIPS agreement was considered to be known as one of the most important multilateral trade agreements on Intellectual Property Law. India became its signatory member in 1995. India also signed the General Agreement on Trade and Tariffs in the year 1994 held in Uruguay and became one of the members of WTO. The signatory members of TRIPS were also bound by certain provisions of the Paris Convention. Subsequently, India signed the instrument of accession to the Paris Convention in the year 1998. In order to fulfill the compliance with the Paris Convention and TRIPS agreement, India enacted its first legislation “The Trademark Act, 1999” and “The Trademark Rules 2002” which came into force in the year 2003. The Trademark Act of 1999, includes the given important provisions with respect to “well-known trademarks”.
Section 11(2) of the act provides the guidelines for the protection of well-known trademarks. It states that the well-known trademarks from all classes of goods and services are to be protected. However, combinedly reading of clause (a) and (b) of Section 11(2) provides the denial of registration of a trademark if it is identical to a similar or an earlier trademark, or if it is similar to the trademark existing from earlier on the name of the different proprietor, or if it is a well-known trademark and the registration of the second one without proper reason will attract unfair advantage to the distinctive character, market repute of the earlier trademark.
Section 11(6) of the Trademark Act deals with the provision of factor taking into consideration before the determination of a well-known trademark. In order to protect the well-known marks from malicious intention from infringement, a joint resolution concerning the protection of well-known trademarks was adopted by WIPO in the year 1999. India being a member adopted all these factors and enshrined them under Section 11 (6). These factors include:
- The knowledge or recognition of the trademark in relevant sections of the public including India which is obtained out of promotion;
- The duration, extent and use of that trademark in the particular geographical where the trademark is registered;
- The duration, extent or geographical area in which the trademark is promoted with respect to the goods and services it applies;
- Registration or application of the trademark to the extent they reflect the use of that trademark;
- The record of successful enforcement of trademark in that particular area which shows that the trademark has been recognised and well known by the registrar or court.
Section 11(7) of the Trademark Act states that in order to determine whether the trademark is known or recognised in the relevant section for the purpose provided in sub-section (6), the registrar shall take three things into account; the number of actual or positional customer of goods and services; the number of people involved in distribution channel system and the business circle dealing with the goods and services to which the trademark shall apply.
Section 11(9) of the Trademark Act deals with the prerequisites that are not required for the determination of a well-known trademark. These conditions are as follows:
- The trademark has been used in India;
- The trademark has been registered;
- The application for registration of trademark has been filed in India;
- That the trademark is registered or registration has been filed and well-known in other jurisdiction other than India;
- That the trademark is well known to the public in large parts of India.
Hence, drawing from the above factors it can be stated that for the purpose of registering the well-known trademarks it is not necessary that the trademark is registered in India nor it is required that the trademark is to be known to the mass as a whole. The provision provides for the protection of the trans-border reputation of the trademark.
Section 11(10) of the Trademark Act deals with the obligation of the registrar. The registrar while deciding on the application of opposition made for the identical registration of a trademark, shall protect the well-known trademark. The registrar while deciding the dispute shall take into consideration the ill motive and intention of the opponent.
Filing of a well-known trademark
The latest rule “The Trademark Rule, 2017” provides that the person seeking the registration of his well-known trademark can make an application before the registrar of the Trademark Registry in a proper format of ™ making an application fee of 1 lakh rupees. The person in the application shall also provide the relevant required documents, evidence, and statement of the case along with the documents. The registrar while determining whether the trademark is valid for registration or not takes into consideration the relevant factors as provided in Section 11(6) to Section 11(9) of the Trademark Act, 1999. The application is mandatory to be filed online through the e-filing service of the Trademark Registry.
There is a list of important documents needed to be submitted before the registrar of the Trademark registry while making an application for the registration of the well-known trademark.
- Statement of Case: Under Rule 124 of the Trademark rules 2017, the applicant needs to submit a statement regarding the claimant right over the trademark describing the trademark to be well-known.
- If the trademark is registered and recognised by the competent court or the registrar then the details for the enforcement of such rights.
- The copy of registration granted by the court or registry.
- The important documents as evidence showing the claimant rights and enforcement of the well-known trademark. Such documents may include the annual transaction proof of the trade, actual or potential number of customers under the said trademark, advertisement or promotion of the said trademark, and the recognition of the trademark in relevant sections of the public across the world.
Remedies available for the trademark owner in case of misuse of well-known trademark
Section 27(2) of the Trademark Act puts restriction over the use of similar or identical well-known trademarks in similar or distinct goods and services. Section 29 and Section 30 of the Trademark Act, 1999 deals with the provision of the remedy in case of infringement of the trademark.
For the purpose of remedy in case of infringement of trademark, whether it is an ordinary trade-mark or well-known trademark it needs to be registered in India. If the well-known trademark registered as the ordinary trademark is being used for identical goods and consideration provided under Section 29 subsection 1, 2, 5 will apply in a similar way to the well-known registered trademark as they apply to the ordinary registered trademark. The difference in action after the infringement of a normally registered trademark and well-known trademark is brought forward through a series of events provided under Section 29(4) of the Trademark Act, 1999. The aforementioned section states that “ a registered trademark having a reputation in India is said to have infringed if any person uses a trademark similar to a registered trademark, or similar trademark used for different goods or service, or there is a malicious intention for making a profit using the repute of the registered trademark”. This provision stands in line with India’s obligation to TRIPS.
In several cases, the courts have levied punitive damages that shall prevent the infringers and persons who copy the registered well-known trademarks. In Time Incorporated vs. Lokesh Srivastava, the Delhi High Court held that in the case of infringement in Intellectual Property Law, the court shall grant punitive damages and compensatory damages as well. In the above-mentioned case, the court had granted 5 lakhs as punitive damages and 5 lakhs as compensatory damages.
There are several relevant cases pertaining to the protection of well-known trademarks in India. These cases are given below:
Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan, AIR 1994 Delhi 239, 1994 RLR 79
It is one of the most important cases of well-known trademark protection. In the above case, the plaintiff was Mercedes-Benz, a German automobile brand. The defendant was indulged in making the undergarment having a tag of “Benz”. The Hon’ble Delhi High Court was of the opinion that using the name of a highly engineered and world-class reputable product on the underwear will dilute the name of that product. The court held that it would be a great perversion of Trademark Law if the mark of the plaintiff Mercedes-Benz having a three-pointed star symbol is copied by someone who is indulged in the trade of the undergarments like defendant or anyone. The court stated that the star symbol is not open to anyone to apply on anything.
Rolex Sa v. Alex Jewellery Pvt Ltd & Ors, CS(OS) 41/2008
In the above case, the plaintiff Rolex, a Swiss watch company filed a case against the defendant for the infringement of their trademark as the defendant was using the name “Rolex” on their artificial jewellery boxes. The court restrained the defendant from using their trademark as the plaintiff’s trademark was well-known and highly reputable and the defendant’s use will mark confusion in the people as they will think that the jewellery was from the plaintiff’s brand “Rolex SA”.
Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, CS(OS) 2163/2010 & I.A. No.14225/2010
In this case, the Hon’ble Delhi High Court restrained the defendant from using the name “Microsoft” as it was a well-known and highly reputable brand used by the public at a global level. The Court further added that since the plaintiff’s trademark had unique goodwill and reputation, so it will not be open for anyone the defendant to copy the name of the well-known trademark.
Tata Sons Ltd. v. Manoj Dodia, CS(OS) No. 264/2008
In this case, the plaintiff Tata Sons Ltd a world-renowned car and heavy vehicle producer filed a suit against the defendant Manoj Dodia proprietor of Durga Scale Company for the infringement of the well-known trademark of TATA. The defendant was carrying the business of producing weight scales bearing the mark of A1 TATA mark. The plaintiff demanded a permanent injunction, damages, edition of accounts and delivery of the infringing materials The court restrained the defendant from using the trademark name of the plaintiff as he was seeking free-ride on the goodwill of the plaintiff’s established brand name. The plaintiff had a well known established brand name not only in India but also trans-border, hence, the court granted permanent injunction along with punitive damage amounting to 2 lakh rupees in favour of the plaintiff.
With the increase in global brands in every section of goods and services, it has become necessary to protect such brands having trans-border repute. The TRIPS agreement is considered as one of the most comprehensive agreements for the protection of Intellectual Property and it covers almost every area from copyright, patent, industrial design, trade secret, and trademark law. A part of the agreement included Paris Convention rules on the protection of the well-known trademark and all the signatory members of the convention were obliged to make laws for the protection of well-known trademarks across trans-border areas. On the lines of such international conventions, India is also having such a law for the protection of rights of well-known trademarks.
The Trademark Law, 1999 and the Trademark Rules, 2002 and 2007 deals with the regulation of marks registered in India or having a global reputation. The Court needs to be quite practical before recognising the international characters of the trademark. The renowned brand name should be enlisted in the directory of well-known trademarks. The decisions of Indian Courts have developed evolving principles for the protection of multinational brands having a trans-border reputation. In case of disputes over infringement, the local laws of the particular nation govern the decision. Multinational brands have to rely upon the judgment of the local court in case of such infringement. The local courts need to be very careful while deciding over the issue of protection of rights of such brand.
- Everything about Well-known Trademarks available at https://www.legalbites.in/everything-about-well-known-trademarks/
- Well-Known Trademark available at http://www.legalserviceindia.com/legal/article-3125-well-known-trademark.html
- A Guide to Well-Known Trademarks available at https://indiancaselaws.wordpress.com/2020/06/20/a-guide-to-well-known-trade-marks/
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