Transborder reputation
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This article is written by Karen Aloysia Barreto, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

Trademark rights under the gamut of traditional intellectual property laws are territorially protected under the laws of the jurisdiction in which the mark is registered, this principle is commonly referred to as the ‘territoriality principle’.[1] However, with the inception of the internet and globalization, protection of marks are no longer restricted to the territory within which they are registered. With burgeoning globalized economies and cross-border trade, several marks have garnered international reputation and goodwill in jurisdictions where such marks are not registered or do not have a localized presence yet through the ‘principle of universality’[2], such marks have acquired international recognition. Trademark law also comprises the ‘principle of priority’ which asserts that the first to use the mark in business will have the right over the mark.[3] The aforesaid priority principle to a certain extent is captured in the ‘tea-rose rectanus doctrine’ which is part of the common law of trademark law applied in the United States of America.[4]

As stated previously, marks are beginning to gain worldwide reputation and goodwill without having a local presence or absence of registration of the mark in such regions across the globe. This has given rise to the concept of ‘spill-over reputation’ also referred to as ‘transborder reputation’[5] where the repute of the mark has surpassed the geographical boundaries from one jurisdiction to another through means of online mediums of communication platforms, global commerce, travel, etc.[6] Marks falling under the aforesaid category are referred to as ‘well-known marks’ and are recognized and codified under international treaties as well as under the Indian legal framework of trademark law. The article aims to lay down the relevant provisions of international instruments and Indian legal statutory framework surrounding transborder reputation and well-known marks.

International conventions and agreements on protection of well-known marks

(I) Paris Convention for the Protection of Industrial Property, 1883 (‘Paris Convention’)

Article 6bis of the Paris Convention provides for protection by cancellation or rejection of registration of an imitation mark that is strikingly similar to the well-known mark on the primary basis of strong likelihood of confusion.[7] However, the aforesaid article fails to provide the needed metrics to be considered in order for a mark to be considered as ‘well-known’[8] and therefore it is contingent upon Member States to the Convention to decide. This lack of uniformity in factors for what constitutes a well-known mark leaves an open-ended debate. The intention behind the scope of protection under the Convention particularly Article 6 was to abate an identical and conflicting mark to take unfair advantage[9] of the reputation and goodwill associated with the ‘well-known mark’.[10] It is to be further noted that article 6 only provides protection for goods and not services under the category of well-known marks.[11]

(II) Trade-Related Aspects of Intellectual Property Marks (‘TRIPS Agreement’)

Article 16 of the TRIPS Agreement provides a broader protection for well-known marks covering both goods and services and is formulated along similar lines of the Paris Convention.[12] Article 16(2) provides certain factors on what could constitute a ‘well-known mark’, it states that it is based on the knowledge of relevant sectors of the public in a Member State as well as the knowledge of the mark in another Member State due to promotion of the trademark.[13] The primary assertion being that marks of goods or services that are identical or bear a striking resemblance to well-known marks will not be granted protection due to the ‘strong likelihood of confusion standard’ among consumers while identifying a mark with a particular good or service. The standard for construing as to what comprises a well-known mark is broadly laid down under Article 16(2) of the TRIPS Agreement as it is only necessary to prove that knowledge of the mark is recognized by a relevant sector of the public. A trademark can therefore by virtue of the said article be granted protection if the knowledge of the mark is known to individuals working in a particular sector[14] and restricts the scope of application to a broader sector of the public. However, the restricted scope of application is balanced by promotion of the trademark to the public at large covered under the same article. Article 16(3) brings in an interesting angle to protection of well-known marks against dissimilar goods and services. In order for clause 3 of the article 16 to be made applicable it is important that the trademark is registered in the jurisdiction where protection is sought, this is followed by establishing a connection under ‘conflict of trade’ in regards to the conflicting mark and the owner of the registered well-known mark and lastly that there is foreseeable damage to the interest of the owner of well-known mark due to usage of the conflicting mark.[15]

(III) World Intellectual Property Organization (WIPO) Joint Recommendation Concerning Provisions on the Protection of Well-known Marks

This non-binding joint recommendation formulated by WIPO in the year 1999 provides certain metrics against which one can determine the components for a mark to be considered a well-known mark.[16] The recommendation is divided into two parts and comprise of (i) Factors for consideration for determining a mark to be well-known in Member States[17] (ii) Scope of Protection.[18] The scope of protection for marks against conflicting marks[19], business identifiers[20] and domain names[21] will be assessed on grounds of bad faith apart from other competing interests. The recommendation also states that it is not necessary for a member state to grant protection if the mark is only ‘known’ in the state and not ‘well known’.[22]

The foregoing international recommendations, agreements and conventions only serve as a guide and it is contingent upon Member States and Countries to interpret as per the aforesaid international instruments to draw their own judicial and legal comprehensions of transborder reputation for trademarks.

Indian legal framework on well-known marks

India became a member of the WTO in the year 1995 and by virtue of the same Indian domestic laws had to be revised to be in compliance with the TRIPS Agreement.[23] In furtherance of the same the Trade Marks Act, 1999 was enacted and thereafter enforced in 2003. The Trade Marks Act, 1999 has codified ‘well-known trademark’ under § 2(zg) specifying pre-requisites for the same.[24] The Act under § 9 and § 11 provides for ‘absolute grounds’[25] and ‘relative grounds’[26] for refusal of a trademark.

Proviso to § 9 stipulates that if a mark prior to application of its reputation has acquired distinctive character due to its use, it shall be permitted registration. § 9(2) and (3) provides further grounds under which a trade mark is not to be registered which inter alia includes deception and confusion among the masses, marks hurtful to the religious sentiments of a particular class or community in India, marks construed to be obscene or scandalous.[27] It is to be noted that the foregoing grounds are very much subjective in nature and it is upon the judiciary to determine and set precedent in cases of trademark infringement that reasonably catenate along the legislative intention of the Act as well as the international guidelines for interpreting well-known marks.

The doctrine of honest concurrent use is enshrined under § 12 of the Act which applies on (i) honest adoption of  trademark  (ii) concurrent use of an identical or similar trademark with another trademark , the registration of which does not matter  (iii) conditions and limitations imposed by the Registrar.[28] The absolute contrary application of the doctrine of honest concurrent use is captured under § 34 of the Act which deals with the doctrine of prior use and reliance is not placed on registration of the trademark.[29] In common law countries such as the United Kingdom, India, etc the action of ‘passing-off’ is extended to proprietors of unregistered and registered trademarks however the latter has the added beneficial remedy in the form of an ‘action for trademark infringement’.[30] Passing off is codified under § 27(2) of the Act therefore an unregistered trademark which has acquired reputation and goodwill but is identically similar to another registered trademark is granted protection.[31]

Conclusion

With the contemporary setting of business being conducted through online modes without pursuing the need to set up a brick and mortar, the concept of territorial protection of trademarks is being diminished. However, the concept of transborder reputation of well-known marks is flourishing in India as Indian Court continues to adopt a flexible approach in recognizing well-known marks in India. [32] The foregoing act is worrisome considering the judicial rigidity in other jurisdictions in applying the law of transborder reputation primarily in relation to the registration of trademarks by Indian proprietors. The rigid approach in recognizing well-known Indian brands was first laid down in the case of ITC Limited v Punchgini Inc[33] wherein a U.S Court of Appeals of Second circuit refused the application of the doctrine of ‘well-known marks’. The decision continues to remain a huge set-back for Indian Proprietors looking towards registering and enforcing foreign trademarks rights. Indian courts should take cognizance of approaches and jurisprudence applied in other jurisdictions to ensure that reciprocity is maintained according to protection towards Indian and Foreign well-known marks.

References

[1] Srividhya Ragavan, Spill-over Reputation: Comparative Study of Indian & the United States, 14 U.PA. Asian L. Rev. 326 (2019).

[2] Shrabani Rout & Garima Raonta,  India: Universality Doctrine Reference Well-Known Trademarks,

Mondaq (Jan.30, 2018), https://www.mondaq.com/india/trademark/668364/universality-territoriality-doctrine-reference-well-known-trademarks#:~:text=Universality%20Doctrine&text=This%20means%20that%20if%20a,other%20country%20for%20that%20matter

[3] Ragavan, supra at 1, 326.

[4] Dominic Riella, Good Faith Concurrent Trademark Use: How the Ninth Circuit Took a Step in the Right Direction for Broad Protection in a Digital Time, 72 (2) SMU L. Rev (2019)

[5] Ragavan, supra at 1, 328-29.

[6] Avanee Tewari, The Evolution and growth of the concept of transborder reputation in India, Lexology, https://www.lexology.com/library/detail.aspx?g=689f9431-36a3-436c-a7f9-85afc6099fab (last visited Oct.10, 2020

[7] Art. 6bis, Paris Convention for the Protection of Industrial Property, 1883.

[8] Ragavan, supra at 1, 330.

[9] Art.10bis, Paris Convention for the Protection of Industrial Property, 1883.

[10] Mukul Baveja, Transborder Reputation : Protection of Foreign TradeMarks in India , Mondaq ( Nov.26, 2018), https://www.mondaq.com/india/trademark/758124/trans-border-reputation-protection-of-foreign-trade-marks-in-india

[11] Id.

[12] Art. 16, Trade Related Aspects of Intellectual Property Rights Agreement (1995).          

[13] Id. Art 16(2).

[14] Baveja, supra at 10.

[15] Art 16(3), Trade Related Aspects of Intellectual Property Rights Agreement (1995).

[16] World Intellectual Property Organization (WIPO), Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks,  WIPO (Sept. 1999), https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf

[17] Id. art 2.

[18] Id. art 3.

[19] Id. art 4.

[20] Id. art 5.

[21] Id. art 6.

[22] Id. Notes on art.3.

[23] Ragavan supra at 1, 334.

[24] § 2(zg), Trade Marks Act, 1999.

[25] §9, Trade Marks Act, 1999.

[26] §11, Trade Marks Act, 1999.

[27] § 9(2) & § 9(3), Trade Marks Act, 1999.

[28] Goenka Institute of Education and Research v. Anjani Kumar Goenka AIR 2009 Del. 139.

[29] § 34, Trade Marks Act, 1999.

[30] Susie Middlemiss & Laura Balfour, Trademark Litigation in the UK (England and Wales): Overview, Thomson Reuters Practical Law (Oct. 1, 2017), https://uk.practicallaw.thomsonreuters.com/w-010-9492?transitionType=Default&contextData=(sc.Default)&firstPage=true.

[31] § 27(2), Trade Marks Act, 1999.

[32] Tewari, supra at 6.

[33] ITC Limited v. Punchgini Inc, 482 F.3d 135 (United States).


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