This article is written by Manya Chhabra pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.
As is apparent from the terminology, “well-known” trademarks in India are those that enjoy extraordinary reputation and recognition in the eyes of the public. In India, well-known trademarks have been granted special protection against the registration of other marks that are identical or “deceptively similar”. An ordinary registered trademark is accorded protection in a certain geographic region and for particular class(es) of goods and services. Well-known trademarks, on the other hand, enjoy country-wide protection, in all the classes of goods and services.
Prior to the coming into force of the Trademark Rules, 2017, a trademark acquired the status of a well-known trademark only as a result of judicial proceedings. However, the Rules of 2017 have significantly eased this process, in that the proprietor need only file an application with the Registrar in form TM-M requesting for a declaration that the mark is well-known.
A well-known trademark enjoys certain privileges, including the prevention of registration of a similar trademark, not only with respect to the goods and services with which it is associated, by across all classes. In addition, the use of such a trademark in corporate names of any organizations can be prevented. Further, the proprietor of a well-known trademark need not wait for the time limit of five years (as is the case for other trademarks) to apply for cancellation of marks registered in bad faith. Lastly, the owners usually enjoy higher awards in infringement proceedings.
One of the landmark cases in which a well-known trademark was granted protection under passing-off is that of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan, wherein the Plaintiff- manufacturer of Mercedez Benz cars- alleged that the Defendant is wrongly using the Plaintiff’s trademark “Benz” for sale of undergarments. The court, while restraining the defendant from using the trademark held, “there’s no valid reason as to why any trader in India should adopt the name ‘Benz’, which is associated with one of the finest engineered cars in the world, and use the same name with respect to ordinary goods, in this case, undergarments, particularly underwear”. The court acknowledged the international reputation of the trademark, remarking that there is hardly anyone who would fail to associate the mark “Benz” with the car. Thus, there is nobody who can plead that he is unaware of the use of the mark “Benz” in connection with automobiles.
In another landmark decision, Whirlpool Co. & Anr. v. NR Dongre, the court considered the trans-border reputation acquired by the Plaintiff and consequently passed an injunction in favour of the plaintiff for their trademark “Whirlpool” for washing machines. At the time, the plaintiff had acquired a reputation for the sale of washing machines to the US Embassy in India, in addition to advertisements in a number of international magazines circulating in India.
The Trademarks Act, 1999, under Section 2(zg) defines well-known trademark 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 mentioned goods or services.“
Factors Determining whether a Trademark is Well Known
Sections 11(6) and (7) enumerate the factors for determining if a trademark is well-known. The World Intellectual Property Office (WIPO) in the year 1999 adopted a “Joint Resolution Concerning Provisions on the Protection of Well-Known Marks” which laid down certain factors; as a member of the WWorldord Trade Organization (WTO), India has incorporated these factors in Section 11(6) of the Act.
- Knowledge about the mark in the relevant section of the public
Section 11(7) explains the term, “relevant section of the public” and states that while determining the same, the Registrar shall take into account “the actual number of consumers, the number of people involved in the channel of distribution of goods or services and the business circles dealing with the goods or services.” In deciding if a mark is well-known, regard must be had to the complete set of facts and circumstances of the case.
The Delhi High Court, in the case of Rolex SA v. Alex Jewellery Pvt. Ltd., while deciding the relevant section of the public took into consideration advertising done in the media since the year 1947, with emphasis on the few years immediately preceding the suit. In addition, the court took into account all the registrations obtained to hold that the relevant sections of the public in India were aware that the mark “ROLEX” is used in relation to watches in the market. The court observed the following, “over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years, it cannot now be said that a trademark that is very well known elsewhere would not be well known here. The test of a well-known trademark in Section 2(zg) is qua the segment of the public which uses the goods.”
Where a Court or Registrar determines a trademark to be well-known in at least one relevant section of the public in India, the same acquires the status of a well-known trademark.
- Duration of use, extent and geographical area of trademark
While the Act does not specifically lay out a term of use of the mark, the legal principle has been settled down by way of precedent.
In Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks, the Intellectual Property Appellate Board (IPAB) opined that use of a trademark for just one year preceding the application would not suffice in acquiring distinctiveness under Section 9 of the Act; as a prerequisite for registration under Section 9, the mark must have acquired distinctiveness.
However, recently the Delhi High Court, ITC Ltd. v. Britannia Industries, settled the principle of the term of use, and held that for a mark to acquire secondary meaning, it is not necessary that the product is in the market for a given number of years. “If a new idea is fascinating and appeals to the consumers, it can become a hit overnight.”
In this context, WIPO’s Joint Recommendation has provided that in the determination of whether or not a mark is well-known in the relevant sector of the public, factors such as the “duration, extent and geographical area of any use of the mark” would be highly relevant.
- Duration, Extent , and geographical area of promotion of the mark
The Registrar may also consider the extent of the promotion of the trademark.
This was apparent in the Whirlpool case, where the apex court noted that even though the product itself was not in use within India, its advertisement and promotion would be considered as “use” in India.
- Duration and geographical extent of registration of the mark and record of successful enforcement of the mark in other Jurisdictions
The Registrar will also consider the registration of the mark in question in other jurisdictions, in order to determine if it is well-known.
In Honeywell International v. Pravin Thorat & Ors., the Court opined that the trademark “Honeywell” was protected under the common law, owing to its “long, extensive and continuous use across the world.” The court stated that the mark was well-known as it had been declared to be a well-known trademark in 3 domain-name arbitration cases.
Transborder reputation of a mark acquired through trademark registration, its use and advertisement as well as its successful enforcement in other jurisdictions are all highly relevant in deciding the secondary significance of a trademark.
Factors irrelevant in deciding if a Trademark is Well-Known
Section 11(9) enumerates certain conditions that are not to be considered by the Registrar; they are the following:
- That it has been used in India.
- That it has been registered.
- That the application for registration has been filed in India.
- That it is Well-known or registered in any jurisdiction other than India.
- That it is known by the public at large.
Procedure for Filing a Well-Known Trademark
As per the Trademark Rules, 2017 an applicant can make a request through an application for determination of a trademark as well-known, along with a statement of case accompanied by evidence and documents. For the same, a fee of Rs. 1 lac has been prescribed.
The Trademarks Registry of India has issued guidelines to be followed while filing such application. As per the guidelines, the application must be filed only through comprehensive e-filing system of trademarks. The applicant must also furnish a statement of the case along with evidence establishing that the mark is well-known, details of successful enforcement of rights (if any), or a copy of a judgment of any Court in India pronouncing the trademark to be well-known.
Remedies for Infringement
There are a number of remedies available to an owner of a well-known trademark in case of its infringement, and they include the following:
- Seeking a cancellation of the infringing mark;
- Prevent the registration of a mark that is identical or similar to the well-known trademark, irrespective of the whether the mark relates to goods or services in the same category of the well-known mark, or other categories;
- Prevent others from incorporating the well-known trademark in their corporate or business names.
The aforementioned remedies are not exclusive to owners of well-known trademarks registered in India; an owner of a well-known trademark registered, used, or sought to be registered or used in India can also avail of these remedies. However, in such case, the mark in question must be recognized by the relevant section of public in India through transborder or spill-over reputation.
Furthermore, the judiciary has also awarded punitive damages to owners when well-known trademarks are infringed. For instance, in the case of Kabushiki Kaisha Toshiba Trading v. Mr. S.K.Sil & Anr., the Delhi High Court awarded punitive damages amounting to Rs. 5 lac to the Plaintiff while stating that the purpose of levying damages on the infringer is to deter those who may be “waiting in the wings” to imitate the trademarks of others. Awarding token damages, hence, may not serve as a strong enough deterrent.
A well-known trademark is indeed an invaluable asset for its owner, enjoying a number of privileges including the exclusion of other owners from using a similar mark. In the last two years, the number of well-known trademarks jumped from 68 to 81. As the Trademark Rules of 2017 have significantly eased the process, there is now potential for multiple applications to be filed at the same time. The ease, however, also means that the Registrar must exercise caution while registering trademarks as well-known, for that would mean that another party would be barred from using a mark even similar to it.
- All You Need To Know About “Well-Known Trademarks”, Sonal Sodhani, Khurana and Khurana, https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks.
- The Trademark Rules, 2017.
- India: An Insight On Well-Known Trade Marks In India, Omesh Puri, LexOrbis, https://www.mondaq.com/india/trademark/304436/an-insight-on-well-known-trade-marks-in-india?signup=true.
- AIR 1994 Del 239.
- (1996) PTC 415 (Del).
- Section 2(zg), Trademarks Act, 1999.
- The Concept of Relevant Public and its Application in the CTM System; Vassil Tenchev Dundov, University of Sofia “St Kliment Ohridski”, https://euipo.europa.eu/knowledge/course/view.php?id=1827.
- 2014 (60) PTC 131.
- 2007 (34) PTC 352 IPAB.
- CS (COMM) 1128/2016.
- 222 (2015) DELHI LAW TIMES 533.
- Rule 124 of Trademark Rules, 2017.
- Guidelines: CG Office/TMR/Well-Known TM/ 355, Ministry of Commerce and Industries, http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf.
- CS(OS) No.1298/2010.
- Contributors: The Changing Perspective Of Well-Known Trademarks In India, Intellectual Property Watch, https://www.ip-watch.org/2017/03/22/changing-perspective-well-known-trademarks-india/.
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