This article is written by Preetish Agrawal, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com.

Introduction

Companies invest millions of dollars to build their reputation and establish themselves in the competitive market. This investment is encashed when a consumer recalls certain characteristics about the company, when they see its ‘Trademark’. Take an example of ‘Benz‘. When a consumer sees the trademark of ‘Benz’ on a product, he is rushed with the idea of great quality cars. However, ‘Benz’ not only personifies ‘great cars’, but also the loyalty and trust that the company has created over time. It is hence important to not just preserve the identity of ‘Benz’ as an automobile company, but as a company of great service and quality. This is why its ‘Trademark’ is protected, even when someone tries and manufactures ‘undergarments’ in the name of it. The case of Daimler Benz Aktiegesellschaft v. Hybo Hindustan [1993], brought ‘Benz’ into the category of ‘Well-known’ Trademarks. Before 2017, Well-known trademarks could only be established by a judicial proceeding as in the Benz case. However, Rule 124 of The Trade Mark Rules [2017], establishes a new procedure by allowing a trademark owner to fill the application form TM-M, and make a request for the trademark to be considered as Well-known. Over the course of this paper, we shall explore the meaning and importance of Well-known trademarks, discuss the factors that determine a trademark to be Well-known, and the conditions that are not necessary for the same. After laying down these conditions, we shall discover the procedure of registering a trademark as Well-known in India.

Meaning and Importance of Well-known Trademarks

A trademark in general refers to a mark that distinguishes one enterprise from the other. Section 2(zb) of the Trademark Act [1999], defines a trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others”.

Well-known trademarks are ‘special trademarks’, which are defined in Section 2(zg) of The Trademark Act [1999]. The section defines Well-known trademarks as, ‘marks of companies that have become so substantial to a section of the public that uses such goods or receives services from those companies, that the use of that mark while using other goods or services would also be taken as a connection with the company that renders such goods or services.’

While trademarks only protect the goodwill of a company to a specific geographical area or range of products, Well-known trademarks protect the same across the nation and for all types of goods and services [Sodhani, 2019]. Hence, when artificial jewelleries were sold in the name of ‘Rolex’, the court in the case Rolex Sa v. Alex Jewellery Pvt Ltd & Ors [2009], granted an injunction towards it; even when Rolex only manufactures watches. This is the extraordinary protection that a brand gets after being recognized as Well-known.

Essential Factors for a Trademark to be Well-Known

Section 11(6) of The Trademarks Act, [1999] lists down the factors to be considered while deciding if a trademark is Well-known or not. These factors are:

• Knowledge and Recognition of the Trade Mark in a relevant section of the public 

The Knowledge and Recognition of a mark in the minds of the general public hits at the heart of the requirement for a trademark to be Well-known. It is Section 11(7) of The Trademarks Act [1999], which mentions the three criteria that a mark must fulfil, to depict whether it is known in the relevant section of the public or not. These include ‘the actual or potential consumers’, ‘the ones involved in the channels of distribution’, and ‘the businesses dealing with the goods and services’.

The members constituting the ‘General Public’ were broadened in the case Tata Sons Ltd. v. Manoj Dodia & Ors [2011], as well as the case Ihhr Hospitality Pvt Ltd v. Bestech India Pvt Ltd [2011]; by including manufacturers alongside consumers and businesses. Further, the case of Canon Kabushiki Kaisha [2008], found that even if the mark is only Well-known amongst one relevant section of the public, it can still be considered to be Well-known.

In the Rolex Case [2009], the Delhi High Court took into consideration the advertising done by Rolex in the media since 1947 to interpret the knowledge of the general public. While in Bloomberg Finance Lp v. Prafull Saklecha & Ors [2013], the court simply interpreted the definition of a Well-known trademark under Section 2(zg) of The Trademark Act [1999], and found it sufficient to consider the trademark as Well-known.

• Extent, Duration, and the Geographical Area in which the patent is used

The Trademark Act does not lay down the specific rules for the determination of this requirement. However, the same has been done in various precedential landmark judgements.

In Sarda Plywood Industries Ltd. v. Deputy Registrar Of TradeMarks [2006], the Intellectual Property Appellate Board (IPAB) was of the opinion that a period of one year was not sufficient for a product to fulfil the requirement of being distinctive as per Section 9 of The Trademark Act [1999]. 

However, this position was changed in Britannia Industries Ltd v. Itc Limited [2017], where the court held that a product with a distinctive packaging does not require a fixed number of years to gain distinctiveness. Moreover, in Mrs. Ishi Khosla v. Anil Aggarwal And Anr. [2007], the meaning of distinctiveness was not seen possible to be derived from the number of years, as products with new ideas have a different appeal and can become a ‘hit overnight’.

The extent, duration, and the geographical area of use were hence seen in a subjective light, depending on a case to case basis.

• Extent, Duration, and the Geographical Area in which the patent is promoted

Apart from the use of the mark, another important consideration according to the act is the promotion of the mark. Similar to the use of trademarks, the statute does not lay down strict instructions, but there have been precedential landmark judgements to determine the same.

As discussed before, in the Rolex case [2009], the Delhi High Court paid heed to the advertisements done by Rolex in India since 1947. Also, in Whirlpool Co. & Anr. v. N.R. Dongre [1994], the Delhi High Court observed that the existence of a good in the market was not necessary for a trademark to be used, and that promotion alone was sufficient.

• Duration or Geographical Area of registration or application of registration

When a trademark is registered in other jurisdictions, it gains a Transborder reputation. The statute in this subsection, refers to the same transborder reputation gained by a trademark as an essential factor in determining whether the same is Well-known or not.

• Record of successful enforcement of Rights enshrined with a TradeMark

In Honeywell International v. Pravin Thorat & Ors. [2015], the Delhi High Court emphasized that heed must be paid to the fact that the mark has been in use for a long time across the world. The court also considered the recognition of the mark in a few arbitration cases. Hence the jurisdiction of registration of the mark is also of importance while considering whether the mark is Well-known or not.

Conditions not necessary for a Trademark to be Well-Known

Section 11(9) of The Trademarks Act [1999], lays down the conditions that are not necessary for a trademark to be considered as Well-known. The conditions are namely:

1. That it has been used in India.
2. That it has been registered.
3. That the application for registration has been filed in India.
4. That it is Well-known or registered in any jurisdiction other than India.
5. That it is known by the public at large.

Registration of a Trademark as Well-Known in India

The Trademark Rules [2017] provide a detailed process of obtaining a Well-known trademark. The applicant has to pay a fee of ₹1,00,000 (which can only be paid online) and fill the TM-M form. A detailed analysis of the form TM-M is available here. The documents that are required to support the online application are listed below:

1. The evidence of recognition of the mark both nationally and internationally (Fulfilling Essential Factor 1).
2. The evidence of actual and potential uses of the mark, alongside with the annual turnover by the usage of the same (Fulfilling Essential Factor 2).
3. The evidence of promotion of the mark (Fulfilling Essential Factor 3).
4. Details of successful enforcement of rights (Fulfilling Essential Factor 4 and 5) [Kapadia, Jain, and Gokhale, 2018].

Conclusion

The Well-known tag was considered to be the holy grail for trademark owners; where everybody would want it, but very few would get it [Reddy 2017]. The number of Well-known trademarks have increased from 68 to 81 in only two years, with the Delhi High Court granting 45 of them [IP Watch]. With the coming of The Trade Mark Rules [2017], the first part is indeed taken care of. There is a potential now for multiple applications for Well-known trademarks to be filed. However, the Registrar must exercise caution while considering these applications, as once a trademark is registered as Well-known, no other party can use a mark even similar to it [IP Watch].

A Well-known trademark is a proprietary asset for a company, giving it multiple advantages, with no similar marks being allowed for any goods and services. However, it is important to maintain the exclusivity of these Well-known trademarks, to maintain their authentic status.

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