This article is written by Sanjana Santhosh, a law student at Christ (Deemed to be University), Bengaluru. The article explains the concept of well-known trademarks and its allied concepts with the help of case laws.

It has been published by Rachit Garg.

Table of Contents

Introduction 

Industrial property and copyright are two classic divisions of intellectual property (IP). Patents, trademarks, industrial designs, and place of origin designations are considered part of industrial property. Works of art, music, and literature are all regulated under copyright laws. Performers’ rights in their performances, phonogram makers’ rights in their recordings, and broadcasters’ rights in their radio and television programs are all covered under copyright laws. In general terms, intellectual property rights are described as a collection of exclusive rights given to the right holder. The phrase ‘intellectual property’ refers to certain legal rights rather than actual intellectual activity. It is crucial to understand these intellectual property rights, how to defend them, and eventually how to capitalise on them. The history of trademarks can be traced back to the start of commercial activity. The marks are as old as humankind and religious history. Researchers have discovered archaeological items from places like ancient Egypt with symbols etched on them for superstitious and religious purposes. ‘Potters marks’—used to distinguish a specific vessel’s creator (potter)—appeared in artefacts from the Greek and Roman eras. The studies pertaining to “potters marks” are well-known among those who specialise in investigating the cultural history of marks. “Well-known mark” is a broad phrase that includes connections established by a trademark, such as goodwill, image, and prestige. ‘Trademark’ is a legal concept and symbolises a distinctive mark or symbol to which a holder can get an exclusive right.

What are well-known trademarks 

Section 2(1)(zg) of the Trademarks Act, 1999, defines a well-known trademark as a mark that has gained enough recognition among a significant portion of the public who utilise such goods or obtain such services that the use of the mark in relation to other goods or services is likely to be interpreted as denoting a connection between those goods or services and the person using the mark in connection with the first mentioned goods or services.

Trademarks and other commercial logos traditionally identify the commercial derivation of goods and services while assuring consumers and other stakeholders of a specific standard. Exclusive rights to trademarks and trade symbols have become more crucial for any player wishing to compete globally in building a strong commercial brand. The revised Trade Mark Rules, 2017 have introduced a new process that enables the Registrar to declare a specific brand to be ‘well-known.’ In accordance with the new regulation, a trademark owner may submit a form TM-M application with a request to the Registrar for the designation of the mark as ‘well-known.’

In contrast to lesser-known trademarks, whose goodwill and reputation are only protected within a certain geographic region and within a narrower range of goods and services, well-known trademarks have nationwide and cross-category protection. The Trade Mark Registry is prohibited by law from registering any mark as a trademark that is deceptively similar to one of the well-known trademarks. Well-known marks have the ability to draw customers, workers, financiers, etc. and may be utilised to establish enduring connections with customers. A well-known mark can be viewed as an intellectual phenomenon, signifying a firm’s capacity to increase value for customers and other stakeholders. Well-known marks are rapidly being acknowledged as a significant asset by businesses today. They serve primarily as means of communication and transport for the value that businesses have amassed. It’s crucial to understand that a well-known mark’s worth is the product of significant investments and efforts that require strong legal protection. Recognizing the growth or history of the development of well-known marks is crucial for appreciating their significance in the modern period. The history of famous marks lays the foundation for the TRIPS agreement, the Paris Convention, and finally the WIPO recommendation.

Legal provisions related to well-known trademarks in India 

Trademark and Merchandise Act, 1958 was the law that controlled trademarks in India prior to the passage of the Trade Marks Act of 1999. Section 47 of the Trademark and Merchandise Act allowed for defensive registration of well-known marks as well as passing-off lawsuits against unauthorised use of well-known trademarks until the Trade Marks Act went into effect on 15th September 2003. According to Section 47(1) of the Act, when a trademark made up of an invented word has become well-known in relation to the goods for which it has been registered and used, its use in connection with other goods is likely to be interpreted as indicating a connection between those goods and the person authorised to use the trademark in connection with the first mentioned goods; the mark may then be registered in his name as a defensive trade mark in respect of those other goods upon application in the prescribed manner by such proprietor, and while so registered, shall not be subject to being taken off the register in respect of those goods.

It is clear from reading the aforementioned section that the likelihood of deceit was taken into consideration when evaluating whether a well-known mark could be registered under this specific clause. Through a remedy against passing off, Indian Courts have preserved rights in well-known trademarks even without any protective registration. In Sunder Parmanand Lalwani v. Caltex India ltd. (1969), the Bombay High Court upheld Caltex India’s legal opposition to the registration of the CALTEX trademark for watches. In this instance, Caltex Ind. Ltd. was the owner of the trademark Caltex for gasoline, kerosene, etc. The mark was very well-known and had a reputation for being monopolistic in the market. Although the court determined that Lalwani was the owner of the mark for watches in India, registration was denied because there was a chance that consumers would be misled or confused and because Lalwani had not established that CALTEX was a truly appropriate trademark for watches.

When the appellant-opponent had been using ‘BATA’ as well as ‘BSC’ as a combined trademark in respect of footwear, registration of a trademark incorporating an “artistic device with letters BSC” for sewing machine parts was permitted in Bata India Ltd. v. Deputy Registrar of Trademarks (2004). The respondent adopted BSC in 1975 and focused on developing the mark’s reputation and goodwill in the Punjab State. The appeals board stated that as the appellant had not independently utilised the BSC mark and the nature of the items was entirely distinct, there was no possibility of mistake or deceit.

In Caterpillar Inc. v. Jorange (1997), the plaintiff was the owner of the trademarks ‘CAT’ and  ‘CATERPILLAR’ for heavy equipment used in the construction and agricultural industries. Since 1996, they have sold a variety of clothing items, including sweaters, coats, sunglasses, and athletic products. The plaintiff relied on the transborder reputation developed from its use of the brand in other countries even though it had not yet introduced the trademark on clothing in India. Additionally, they asserted that when well-known brand names were utilised on various products, confusion would result. The defendant was prohibited by the court from using the trademarks “CAT” and “CATERPILLAR.” The instances mentioned above served as some of the significant legal precedents that allowed the Trade Mark Act of 1999, which became effective as of September 2003, to codify a well-known mark.

Section 11 of the Trademarks Act, 1999 : relative grounds for refusal

Before a trademark is recognised as a well-known trademark, several factors listed in Section 11 of the TM Act must be taken into account:

  1. Knowledge of the purported well-known mark’s recognition in the relevant segment of the public, which denotes knowledge acquired through trade mark promotion.

The plaintiff in Rolex S A v. Alex Jewellery Pvt. Ltd. (2009) was the proprietor of the well-known trademark Rolex for Watches, which enjoys widespread recognition. Defendants operated a company selling imitation jewellery under the Rolex brand. The Delhi High Court concluded that the public segment that uses Rolex watches that fall into a specific category in terms of price is very likely to believe that jewellery bearing the trademark Rolex has some connection to the plaintiff after analysing the definition of a well-known trade mark under Section 2(1)(zg).

  1. Courts have been accommodating in relation to the establishment of proof of the degree of use, whether high or low on the part of the plaintiff, regardless of the length of time the trade mark has been used. 

In the case of Indian Shaving Product Ltd. v. Gift Pack (1998), more often known as the Duracell Ultra case, the Delhi High Court found that even though the plaintiff had made significant sales and had actively advertised, the necessity to prove a significant period of sale was not relevant.

  1. The duration, scope, and geographic region of any trademark promotion, including any advertising or publicity, displays at trade shows, and displays of the goods or services where the trademark appears. The Courts should give advertising forms the consideration they deserve in cases of passing off involving well-known marks. 

In the Whirlpool case (1998), the Supreme Court of India determined that the mark was a well-known mark and that the product’s advertisement was sufficient to reach the relevant segment of the public, despite the fact that the company’s product was completely absent from the Indian market.

  1. The length and geographic scope of any trademark registration under this Act, or any publication for trademark registration, to the degree that they reflect the use and recognition of the brand.
  2. The track record of rights in that trademark being successfully enforced, in particular the degree to which that trade mark has been acknowledged as a well-known trade mark by any court or registrar under that track record. 

For instance, Shaw Wallace, a well-known alcohol manufacturing company, successfully defended its trademark rights over the numerical component of the brand name “5000” in the cases of Shaw Wallace and Co. v. Superior Industries Ltd. (2003) and Shaw Wallace and Co. v. Mohan Rocky Spring Water Breweries Ltd. (2007).

  1. The quantity of actual or prospective buyers of the goods and services in the recent case of Aveda Corp. v. Dabur India Ltd. (2010).

Plaintiff sold beauty products under the trade name “Aveda” in his business. On the other hand, the defendant began utilising the name “Uveda” as their trademark when they began marketing their own line of cosmetics. The Delhi High Court considered the plaintiff’s beauty product’s insignificant foothold in India (as their supply was limited to a single spa in India, Rishikesh). Therefore, there is very little chance of confusion in people’s minds because the defendant, Dabur, has a much larger consumer base than the plaintiff. As a result, the court only made a minor suggestion to the defendant to reduce the likelihood of confusion by increasing the font size of their name.

  1. Intermediaries in the channels of distribution.
  2. The business group that deals with the services or products that the trademark covers.
  3. A trade mark must be considered a well-known trade mark for registration under this Act if it has been found by a court or registrar that it is widely known in at least one relevant segment of the public in India.

A trademark that is similar to or identical to a “Well-known mark” cannot be registered for dissimilar goods or services, according to Section 11(2) of the Trademark Act. On the other hand, Section 29(4), which deals with trademark infringement, makes no specific mention of well-known marks and only refers to a mark having a “reputation in India” that signifies intent to infringe.

Section 12 of the Trademarks Act, 1999 : honest and concurrent use

A trademark is meant to indicate that the goods come from one source and one source only, hence using the same brand simultaneously by two or more people for the same items is completely against the intent of trademark law. However, Section 12 of the Trademark Act of 1999 contains provisions to handle extraordinary situations resulting from distinctive persons’ lawful concurrent use of the same or a similar mark. The Registrar may allow the registration of identical or similar trademarks by more than one proprietor for the same or similar goods and services (regardless of whether any such trade mark is already registered) in the case of honest concurrent use or other special circumstances that, in the Registrar’s opinion, make it proper to do so, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. This provision is similar to Section 12 (3) of the Trade and Merchandise Marks Act 1958, with the difference that services are included, the word “similar” is used instead of “nearly resemble each other,” and the phrase “similar products” is used instead of “depiction of merchandise.”

Section 12 permits the registration of identical or similar trademarks for the same or similar goods by more than one proprietor. It is an exception to the Section 11 rule that prohibits the registration of similar marks and supersedes the Section 11 rule that simplifies denial. It is made clear in the enclosure that the exclusion applies to unregistered marks as well by the phrase “whether any such trademark is presently enrolled or not.” The use of the phrase “he may allow registration” indicates that allowing concurrent registration is optional. The registrar has the authority to impose any restriction or limit when allowing registration. Aspirants are responsible for setting up a registration instance under the Section. The other provision of the statute must obviously be complied with before registration might be permitted on the basis of honest concurrent use. Due to the application’s lengthy waiting period, the group cannot profit from subsequent users. Since the clause calls for honest concurrent usage, it follows that the claimed use must also be concurrent and honest. Concurrent use does not mean that the petitioner’s use has overlapped with the rival’s registration; rather, it means that the petitioner’s use must be contemporaneous with the rival’s use of the registered mark. “Concurrent” does not have the same value as “contemporaneous”.

The purpose of Section 12 is to recognise and make note of the fact that a significant open can realise that are two similar marks being used due to a concurrent user’s realisation of their similarity. As a result, the user will be directed to inspect the marks more thoroughly than usual before recognising them. This requires that the same open have both markings in the marketplace and the ability to assess the degree of chaos that can be guaranteed from the similarity of the marks, which is greatly indicative of the degree of an open hindrance. Such use would not be considered concurrent use if the opponents’ and seekers’ products were sold through different commercial channels. There hasn’t been a chance to assess what level of confusion is standard in people on the whole when the competitors’ mark hasn’t been used or when the groups’ products haven’t been marketed side by side in the same market. The registrar may decide to enrol the mark in such a case under the qualifier “or other unusual circumstances.” Two significant instances helped establish the defence of honest concurrent usage. First, it was determined in the case of Dent v. Turpin (1861) that two users of the mark who shared a common predecessor had a separate right to request an injunction against a third party who was using the mark unlawfully. Second, in Southorn v. Reynolds (1865), the Dent case was cited in order to draw conclusions about other facts that were similar, but neither of these instances dealt with a dispute between contemporaneous users.

The law regarding honest concurrent use with reference to Section 12(3) of the Trade & Merchandise Marks Act 1958 being Ejusdem Generis to Section 12 of the current Act was established in the case of Kores (India) Ltd. v. M/s Khode Eshwarsa & Son (1985). The Bombay High Court ruled that the mentioned factors must be taken into account in order to determine a trade mark’s eligibility for registration as an honest concurrent use mark:

  1. The concurrent user’s honesty.
  2. The amount of concurrent use of the trademark demonstrated by the petitioner in relation to the time, place, and volume of trade as well as the items in question.
  3. The likelihood of confusion caused by the similarities between the opposing party’s and applicant’s trademarks, as an indicator of the general good or general annoyance.
  4. Whether any confirmed cases of confusion exist.
  5. The potential degree of inconvenience to the parties involved.

Since the 1994 modification to the Trade Mark Act mandates that the owner of a prior mark must oppose a registration application in an opposition hearing, the effect of the honest concurrent user argument has been diminished to a greater extent.

Process of filing a well-known trademark 

The High Court of India, the Intellectual Property Appellate Board, and the Supreme Court of India are all appropriate referral points for determining whether or not a trademark has attained a “well-known” status. However, the situation has changed since the Trademark Rules, 2017 were officially published. According to Rule 124 of the Trademark Rules, 2017, any interested party can submit an application online by filling out Form TM-M and attaching the required documents, such as a statement in support of the application that includes the reasons the trademark should be recognised as well-known and paying the required fees. In addition to the fact that well-known trademarks do not need to be used in India in order to be registered, the fact that the protection is extended regardless of differences in the field of business, goods, or services is also an advantage for multinational companies seeking comprehensive brand protection in India.

Selection of a trademark

A trademark should be something truly special if one wants it to stand out in the marketplace. Secondly, knowing what social group an individual falls into is crucial. Registration of the trademark can be sought in 45 different “classes” of goods and services at the moment. Products fall into classes 1-34, whereas services fall into classes 35-45.

Mark search

Once the mark is settled, an individual should look it up in a database to see if it is comparable to any other trademarks that are already in use. The Controller General of Patents, Designs, and Trademarks has a webpage where one can undertake this research on their own. A public search feature is available on the site. Once the link is selected, a subject area has to be selected and a database search has to be conducted. The alternative, however costlier, is to seek the advice of an attorney. If the trademark is challenged, the total cost of legal representation will be less. 

Application

Multiple classes, series, or collective trademark applications can be filed in a single application. A special form (TM-A) needs to be filled out for this. Registration in more than one class for the trademark is possible with this form. There are two price tiers for submitting this form:

  1. Nine thousand or ten thousand rupees

This category includes everyone other than sole proprietors, very small businesses, and individuals. The filing fee is Rs. 9,000 if the form is submitted electronically and Rs. 10,000 if the form is submitted in person to the Office of Trademarks.

  1. Four thousand five hundred or five thousand rupees

The fee for filing the form electronically is Rs. 4,500, while the fee for filing the form manually is Rs. 5,000.

Typos or grammatical errors on the form must be avoided, as doing so could cause the application to be delayed or even rejected. The form must be completed and provide a 9-by-5-cm image of the trademark.  Two copies of the entire file must be submitted with the original paperwork.

It can be submitted online, in person, or through an agent. If filed electronically, a confirmation will be received of the submission right away; whereas if it is emailed or faxed, the waiting period may extend up to two weeks.

Online trademark registration procedure

Step 1: Search online for a brand name

Since the majority of the generic names are likely already in use, adopting a brand name that is both wild and quirky is a good strategy. In addition, one needs to do some fast research to avoid choosing a brand name that’s already in use. The best thing is to make up one’s own catchy business name by combining existing terms.

Step 2: Trademark application preparation

The following materials must be presented alongside the application for online trademark registration:-

  1. The applicant’s rights in the trademark and the grounds for claiming fame for the brand must be laid forth in the case statement.
  2. Proof of the applicant’s rights and claim, including but not limited to evidence of the applicant’s use of the trademark, proof of any applications for registration made or registration obtained, proof of the applicant’s business’s annual sales turnover based on the subject trademark, proof of the number of actual or potential customers of goods or services under the said trademark, proof of the applicant’s publicity and advertising of the said trademark, and proof of the expenses incurred as a result of such publicity and advertising.
  3. Copy of the judgement of any court in India or Registrar of Trademarks, if any, recognising the trademark as a well-known trademark. 
  4. Details of successful enforcement of rights, if any, relating to the said trademark to the particular extent to which the trademark is recognised as a well-known trademark.
  5. PDFs with a resolution of 200 x 100 dpi on A4-sized paper are preferred for submission with the statement of the case as evidence/supporting material, and the overall file size must not exceed 10 MB.

Step 3: Application to register the brand

The registration application can be submitted in two ways: manually or electronically (form TM-A). In the case of “manual filing,” one will have to travel to one of the Registrar offices of Trademarks in major cities throughout India including Delhi, Mumbai, Kolkata, Ahmedabad, or Chennai in order to physically hand over the application for registration. After that, the waiting period is usually around 15–20 days for the confirmation of receipt to arrive. However, in the event of an electronic filing system, one will receive an immediate online acknowledgement of the submission. After approval has been received from the Trademark Office, one may start using the TM sign next to their brand name.

Step 4: Consideration of the brand name application procedure 

After receiving the application, the Registrar of Trademarks will verify compliance with the law and whether or not the proposed trademark name meets the requirements. Additionally, the trademark being registered must be unique and not be comparable to any other brands that are already in use or that are in the process of being registered. 

Step 5: Brand posted to the Indian Trade Mark Journals

After the trademark has been reviewed and approved, it will be published in the official Indian trademark journal by the Registrar of Trademarks. It is imperative that no opposition be filed within three months (i.e., 90 days, or 120 days in some situations) following the publication date for the trademark registration application, as this is the most crucial stage of the process. In the absence of any objections, the Registrar of Trademarks will move forward with issuing a Trademark Registration Certificate.

Step 6: Trademark opposition 

If any third party files an objection to the trademark within three months of its publication in the trademark journal, the Registrar of Trademarks is required by law to provide the applicant with a copy of that opposition notice. Within a few months of receiving the opposition notice, the applicant must file a counter-statement in response. The trademark application will be regarded as abandoned and denied if the counter statement is not submitted within the allotted time of 2 months. If the brand name doesn’t face opposition within three months, the applicant can skip this phase and move forward with filing for a Trademark Registration Certificate.

Step 7: Trademark opposition hearing

This procedure may be skipped in the absence of any trademark opposition. However, the Registrar of Trademarks will forward a copy of the applicant’s counter-statement to the person opposing the trademark registration if one submits it within two months of receiving notice of opposition to the trademark.

Both parties will need to produce evidence to back up the claims. After both parties submit evidence to the Registrar, they will be given a chance to be heard. The Registrar will rule on whether or not to approve the application for a trademark after hearing from both parties and reviewing any relevant information. After reviewing the trademark application, the Registrar of Trademarks may decide to award registration.

Step 8: Obtaining the trademark registration certificate 

If no objection is filed within the 90-day deadline, or if the application is accepted following a trademark opposition hearing, the Registrar will grant the applicant a trademark registration. The Registrar will issue the Registration Certificate, officially confirming the trademark.

A registered trademark allows one to use the ® sign next to their brand name in legal documents and online directories.

Status of application of trademark

The application submission confirmation email will provide an allocation number. This allocation number will provide access to an online status checker for one’s application. This process might take anywhere from 18 months to two years, depending on the complexity of the application. This might take longer than expected if there is a hitch. Since applications are given higher priority, the sooner they are filed, the longer the process takes. Furthermore, one can use the TM sign next to their mark if the applicant receives their allocation number even if the application has not yet been granted.

Trademark registration

A trademark registration certificate will be issued by the registrar once a trademark has been accepted. The registration and protection of a trademark will be confirmed in this manner. The registration period starts on the application date and lasts for 10 years. A trademark can be renewed once its term has expired. It is possible to keep renewing trademarks indefinitely. Having a trademark in India does not grant any special rights anywhere in the world.

Important facts on trademark registration

One of the most precious assets of any business may be a trademark. It serves as a means of identification and makes a substantial contribution to improving the company’s reputation. A trademark is a distinguishing visual element, such as a word, name, number, label, logo, or arrangement of colours. It serves as a distinguishing feature and aids consumers in recognising a specific brand or business. The rules pertaining to trademarks and their registration are governed by the Trademark Act, 1999. The Controller General of Patents, Designs and Trademarks, (Office of the Registrar of Trademarks), Ministry of Industry and Commerce, Government of India, registers trademarks in India.

Important things to know about registering a trademark:

A pictorial representation

There are a wide variety of trademarks that can be registered. Some examples are as follows: – Word Marks, Service Marks, Logos and Symbols, Shape of Goods, Series Marks, Collective Marks, Certification Mark, Geographical Indicators, Pattern Marks, Sound Marks, Colour Marks, Three Dimensional Marks.

Intangible assets

As a form of intellectual property, a trademark offers several advantages to a business. A registered trademark is an intangible asset that may be sold, licenced, and disseminated.

Legal shield against infringement and other damages

Legal recourse is available to the owner of a trademark in the event of any infringement of the owner’s logo, brand, or phrase that bears the trademark. Any person or business that uses the trademark without the owner’s consent may be subject to legal action from the trademark’s owner.

Trademark search

In order to ensure that a trademark is unique, one should conduct a trademark search. There are two options for conducting this search: the official government database known as the Indian Trademark Registry, or the website of a private company offering this service.

Selection of class

There are 45 distinct industries that make up the local economy. The term “class” is used to designate each industry. Every trademark must be filed in the correct classification. There are 45 categories in total, 34 of which pertain to products and the remaining 11 to services.

Transparent and clear registration requirements

The process of registering a trademark is entirely optional. However, if a trademark is registered, that proves conclusively that the trademark owner is the one who really went through with the registration process. The party that successfully registered the trademark will be given the benefit of the doubt in any legal proceedings.

Credibility

Trademark registration can remain in effect for up to ten years before it has to be renewed. One year prior to the trademark’s expiration is the absolute limit for starting the renewal process. If it doesn’t happen, the trademark will be taken away. In the event of cancellation, the trademark can be restored by filing the appropriate paperwork with the relevant trademark office.

Symbols used in trademarks

Trade and Service (SM)

This indicates that the trademark registration application has been filed but has not yet been processed. It serves as a cautionary notice to anyone who could infringe upon the protected work. Since the application has not yet been authorised by the relevant authorities, it has no definitive legal significance.

The letter ‘R’ symbol

Once a trademark application has been granted, one can use the registered trademark ‘R’ symbol to showcase a brand’s accomplishment. A registered trademark means that any unauthorised use of the mark is illegal and subject to legal repercussions.

The use of the ‘R’ sign is optional. However, the trademark owner is safeguarded in the event that a counterfeiter copies his goods in such a way that he needs to sue the counterfeiter to get his money back. This is due to the fact that the burden of proof is with the trademark owner, who must show that the infringement knew the brand was registered and yet used it without authorization.

The ‘C’ symbol

The ‘C’ symbol is commonly used to indicate that the owner of a creative work possesses the copyright. Some examples are art, photographs, videos, books, and computer programs.

The copyright holder’s name and the year of the work’s initial publication in the nation where it was copyrighted should accompany the sign. When it comes to registering a trademark, there is a lot of information that one needs to understand. The application procedure is complex, so each candidate should study it thoroughly. Therefore, there are several advantages to registering a trademark when done carefully.

Benefits of trademark registration in India

A trademark is a special indication used to identify a business’s goods and services. It might take the form of text, a logo, a number, or even a colour combination. With the help of the Trademarks Act of 1999, one may register a brand as a trademark.

The use of a trademark helps businesses and their customers to easily identify their goods and services in the marketplace. However, it’s important to remember that trademark registration is not possible for generic terms.

A trademark, in addition to being distinct, should be memorable and straightforward to use in order to increase product sales and customer loyalty. There are several benefits to registering a trademark:

When a trademark is registered, it receives the legal status of intellectual property and the protections accorded to such works. When a trademark is registered, the owner gains the exclusive right to use that mark in commerce in connection with the ‘Class’ of products or services that the mark identifies. The trademark application process enables the use of the TM symbol on items. The inclusion of the letter “R” after one’s trademark name indicates that it has been registered. In addition, the TM mark can only be used in relation to the specific products and/or services that are included on the registration certificate. If a holder’s trademark has been used by a third party without permission, the trademark holder can file a claim for trademark infringement in the country’s competent judicial system.

Registered trademarks are unique to the products or services they identify. The ability to set a product apart from the offerings of rivals is a key benefit of securing a trademark. Additionally, the trademark registration will aid in the identification of business products because it will be valid for the full class of goods or services represented. By distinguishing a product from others on the market, consumers will be more likely to buy it.

Customers will remember a company’s name and products because of its quality, reliability, and other positive attributes. Commonly, they’ll recognise the brand through its logo, which is a trademark. Brand awareness for goods and services is facilitated by trademark registration. Additionally, it builds consumer confidence in the product. When people are familiar with one’s brand, companies automatically gain their trust and, in turn, their business.

The registration of a trademark results in the establishment of a new business asset. For bookkeeping and tax reasons, a trademark is treated as an intangible asset. A trademark is a component of intellectual property that has value because of the goods or services it represents. Trademarks can be used in a variety of business contexts, including as the basis for sales, franchises, and assignments. In the books of accounts, trademarks can be valued or cost and depreciated, and revenue can be recorded if any was earned.

When consumers recognise a brand and link it with quality items, it increases the company’s value, goodwill, and net worth. Trademarks should convey not just commitment to excellence but also the unique selling points of items and the ethos of a company. Owning distinctive trademarks may help a company succeed. They are useful for preserving consumer loyalty and shielding the company’s reputation.

Registration of a trademark in India grants the owner the right to use that mark commercially for 10 years from the date of application. A trademark, however, can be renewed for further terms. If one wishes to grow their business outside of India or make use of the trademark there, registration of such a mark is required to be made in that country. A trademark owner having a registration in India may easily get a registration in other countries. 

A trademark helps buyers identify items from a certain company, which may lead to increased sales and brand recognition. An audience may be built if one offers useful or distinctive goods. Maintaining and growing a consumer base is made easier because of the trademark. A trademark registration grants 10 years of exclusive usage, safeguarding the company’s income. Businesses can increase profits by introducing new items to an existing clientele and branching out into related markets.

Remedies for infringement of a well-known trademark 

Civil remedies

Whether the trademark is registered, awaiting registration, or unregistered, a passing off or infringement complaint can be filed under the Act. The sooner legal action is taken against the infringer, the sooner the rights holder may demonstrate to the court the severity of their purpose. A delay in filing suit might impair the likelihood of getting an injunction. However, if the underlying cause of action is ongoing, the courts have treated such “new” knowledge as if it were entirely new evidence and have moved forward accordingly.

It has always been difficult for trademark owners and courts to put a price on the harm done by trademark infringement. Rights holders typically give up their claim since it is difficult to calculate damages based on the actual or anticipated loss sustained. However, Indian courts have recently begun awarding monetary damages as a means of deterring future violations of IP rights.

In order to have a civil remedy enforced, an action for infringement must be filed in a court of law. The available civil reliefs are as follows:

Interlocutory/Temporary/Ad-interim Injunction

Discretionary remedy provided to the plaintiff that restrains a party to a case from taking action until the matter is resolved;

A Mareva Injunction

A type of temporary restraining order that prevents a defendant from selling or otherwise transferring property until a trial has concluded or a verdict has been entered.

Anton Piller Order

To make sure that relevant documents and infringing items are not removed or destroyed by the defendant, an Anton Piller Order may be issued, allowing the plaintiff access to the defendant’s premises for the purposes of inspecting them, making copies of them, and removing them for safe custody.

John Doe Order

Search and seizure warrants issued by a court against defendants who have not been identified are known as “John Doe Orders.”

Permanent/ Perpetual Injunction

A permanent or perpetual injunction is a final court ruling prohibiting a person from engaging in certain acts (infringing ones) indefinitely.

Damages or Accounts of Profits 

Compensation awarded to the plaintiff for losses brought on by the defendant’s actions; sometimes known as ‘damages’ or ‘accounts of profits.’ An equitable remedy known as ‘accounts of profits’ compels the defendant to pay the plaintiff the sums of money that have been earned as a direct result of the infringing conduct.

Delivery up and destruction

This occurs when the defendant either destroys the infringing items or passes them over to the plaintiff.

When it comes to trademark disputes, a civil lawsuit is the best bet for obtaining compensation. Nonetheless, merely imposing hefty punitive penalties is rarely sufficient, since the difficulty generally resides in the process of actually recovering the damages from the infringing party. While courts have been more willing to award significant sums of money in damages, they have not done much to address the second issue, which is actually getting that money back from the losing party. In a very significant way, the remedy is diminished by this.

Criminal remedies

Infringements against the Act include manufacturing or having devices for forging trademarks, using fraudulent trade descriptions, and other similar practices. The maximum sentence for any of these offences is three years in jail, with or without a fine.

Infringements under the Act are considered ‘cognizable’. Therefore, during raids, police have the authority to not only recover infringing products but also apprehend the guilty. Sections 103 and 104 of the Act govern the filing of complaints seeking criminal remedies. The Magistrate Court is where citizens can go to register complaints in order to have the police conduct investigations and raids. Following the submission of a complaint, the Magistrate will take down the details of the case and issue an order with specific instructions for the Police to follow.

The complainant must identify the infringers so that the police can investigate them, even though the order is a directive to the Police to do so. Multiple, unrelated targets might be raided based on a single allegation made against “unknown people.” After the searches have been conducted, the onus is on the complainant to follow up with the police and provide evidence that the goods confiscated are in fact fake.

Administrative remedies

In the event of trademark infringement, the following administrative remedies may be pursued:

Opposition against a similar mark

Within four months of a trademark’s publication in the Trademarks Journal, any right holder or third party who feels the mark would cause confusion or deceit among the public may file an opposition. Both sides then present evidence in support of their respective claims, and a decision is made as to whether or not the trademark should continue on the register.

Ratification of Trademark Registration 

If a party is wronged and feels that a registered trademark should be removed from the register, they can seek correction, cancellation of registration, or removal. There may be trademarks on file that are no longer in use, that have expired, or that were registered without due consideration for the likelihood of confusion with pre-existing trademarks. The process for amending the register in the event of a mistake or omission is outlined in the Act.

  • Notifying customs of the infringement so that no products carrying the trademark can be imported or exported.
  • Implementation of the 1962 Indian Customs Act

In order to safeguard intellectual property, the Indian Government can forbid the import or export of certain items under Section 11 of the Indian Customs Act, 1962. Any contraband brought in violation of this or any other legislation may be subject to seizure. If a customs officer suspects that illegal goods are being transported, he or she has the authority to conduct a search, conduct an x-ray of the suspect, and seize the items in question. If they have probable cause to believe a certain individual is involved with the fake products, they can conduct an investigation, question that person, and ultimately place them under arrest.

Customs authorities will now be able to enforce intellectual property rights over imported goods thanks to these guidelines, which are in line with border procedures mandated by the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). Right holders can register trademarks with Customs under these regulations. In accordance with these regulations, Customs officers can seize trademark infringing products at the border without a court order if they have reasonable reasons to assume that the imported items are trademark infringing goods based on prima facie evidence.

A notification by application detailing the reasons for the suspension and the consignment data is required under these Rules. The Customs authorities may file the complaint and implement necessary border control procedures after they receive the application. Once it has been determined that the goods detained have infringed the trademarks of the rights holder and that no legal proceeding is pending in relation to such a determination, Customs officials are authorised under these rules to destroy the suspended goods under official supervision, or to dispose of them outside the normal channels of commerce.

Landmark case laws relating to well-known trademarks

Cadila Health Care Ltd. v. Cadila Pharmaceuticals (2001)

Facts of the case

In this case, the appellant and respondent are pharmaceutical businesses who launched and registered medicinal drugs called Falcitab and Falcigo in 1996 and 1997, respectively. In 1998, the appellants discovered that the respondent had a product with a name and purpose similar to theirs and filed an order restricting them from further trading in the District Court of Vadodara.

The Court ruled in favour of the respondents since the two components differed in appearance, formulation, and price, and they were scheduled L products, which meant they were marketed directly to hospitals/clinics rather than to consumers. As a result, there was no room for misunderstanding. Following that, the appellants appealed to the Supreme Court. The appeal was denied by the High Court on the grounds that there was a minimal potential for passing off and no probability of confusion.

When the appellants approached the Supreme Court, it declined to investigate the legitimacy and constitutionality of the lower courts’ orders because it was under a responsibility to resolve the issue as quickly as possible. This case includes an issue of passing off, which is distinct from trademark infringement.

Issues involved in the case

  • Whether the respondent’s selling of the ‘Falcigo’ medicine constitutes passing off?
  • Whether the Cadila Pharmaceutical mark, ‘Falcitab,’ is similar to the Cadila Healthcare mark, ‘Falcigo’?

Judgement of the Court

The Hon’ble Court further stated that even if the pharmaceuticals in question are from ‘Schedule L’ and are sold directly to hospitals or clinics, the likelihood of mistakes between both drugs cannot be avoided even if prescribed by a medical practitioner.

The Supreme Court ruled that it makes no difference whether the plaintiff and defendant work in the same sector or sell identical items. It defined the following grounds for deciding a passing off case based on an unregistered trademark:

  • Nature of the items and markings.
  • Degree of similarity.
  • People who are inclined to purchase goods based on the mark.
  • Mode of acquiring products or submitting orders for them.
  • Any other situations that may exist.

Ford Motor Company & Anr. v. Mrs. C.R. Borman & Anr. (2014)

Facts of the case

Ford Motor Company is a company incorporated and existing under the laws of Delaware in the United States of America, with its primary place of business in Michigan. In this case, the plaintiffs had outlined in the plaint the origins of the plaintiffs’ business and how the plaintiffs’ trademark, trade name, and house mark ‘FORD’ were developed by its founder, Mr. Henry T. Ford, who founded the Ford Motor Company in 1903. The plaintiffs have also described how ‘FORD’ has evolved and diversified its company over the past more than 100 years, becoming one of the world’s largest industrial corporations.

Issues involved in the case

  • Whether ‘FORD’ has acquired the status of a well-known trademark?

Judgement of the Court

The trademark ‘FORD’ is particularly “well-known” among members of the sector and the general public. The long duration for which the plaintiff has used the said mark, the wide geographical area of use, the general public’s knowledge of the trademark ‘FORD’ and its goodwill and reputation as a result of the extensive promotion, publicity, and advertisement, use of the mark as well as extensive sales made by the plaintiffs under the mark in India and other countries, and the numerous registrations obtained of the mark all establish the fact that the plaintiffs’ mark ‘FORD’ has indisputably achieved the character of ‘well-known mark.’

Intel Corporation v. CPM United Kingdom Ltd. (2007)

Facts of the case

Intel Corporation (Intel) has a number of national and community trademarks including the term ‘INTEL’, including a UK trademark registration for the word mark ‘INTEL’ for computers and computer-related goods and services. In the United Kingdom, the ‘INTEL’ brand is synonymous with microprocessors, multimedia, and business software. CPM United Kingdom Ltd. has a UK trademark registration for the word mark ‘INTELMARK’, which was registered on January 31, 1997, for ‘marketing and telemarketing operations’ in Class 35.

In this case, we find that on October 31, 2003, Intel filed an application with the UK Trademark Registry for a proclamation of invalidity against the registration of the ‘INTELMARK’ trademark, claiming that the use of that mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier ‘INTEL’ trademark within the meaning of Section 5(3) of the Trade Marks Act 1994 (the UK implementation of Article 4(4)(a) of the Directive).

Intel’s motion was denied, as was its later appeal to the Supreme Court. Intel then filed an appeal with the Court of Appeal, claiming that both Article 4(4)(a) and Article 5(2) of the Trademarks Directive seek to safeguard the owner of a well-known trademark from dilution. It contended that just drawing to mind the earlier mark was enough to establish a ‘link’ between the earlier and later markings, rendering the later mark invalid. The Court of Appeal submitted various questions to the ECJ concerning the considerations required to determine whether a later trademark unfairly benefited from or was damaging to the unique character or renown of an earlier trademark for the purposes of Article 4(4)(a).

Issues involved in the case

  • Whether the use of ‘INTELMARK’ would pose an unfair trade advantage, and be detrimental to the distinctive character of the trademark ‘INTEL’?

Judgement of the Court

The ECJ found that damage to the earlier mark’s distinctive character (also known as dilution or blurring) occurs when that mark’s capacity to identify goods or services as originating from the proprietor of that mark is impaired.

If the relevant segment of the public has not drawn a ‘link’ between the prior and subsequent marks, the latter mark’s use is unlikely to take undue advantage of, or be damaging to, the earlier mark’s unique character or renown. However, the mere presence of the relationship is insufficient to prove the necessary harm under Article 4(4).

Conclusion 

Indian law recognises the inherent worth of established brands and affords them heightened protection. Regardless of how long a trademark has been there, the massive quantity of exposure it has received is a defining feature of famous trademarks. Owners of trademarks have been known to resort to utilising flashy titles, numbers, and other identifiers in an effort to distinguish and strengthen their brands. Although Section 2(1)(zg) of the Indian Trademark Act 1999 defines “well-known mark,” and Sections 11(2), (6), (7), and (9) of that Act specifically address “well-known marks” and “firms’ relative grounds for refusal of trade mark registration,” Section 29 of that Act, which addresses “infringement of the registered trademark,” does not use the expression “well-known mark” in any of its clauses, instead relying on the term “trademark” in Clause 4 makes it very confusing to find out the real intention of the legislature in regards to the protection of a well-known mark after registration- does it mean that the legislature had the intention to protect the well-known mark at the stage of registration only? If not, why is there a discrepancy in respect to the language used in sections 11(2) and 29(4)? Besides the incoherence in section 29(4), there are a few more issues that the legislature should look into and clarify:

  1. The Act’s definition of a ‘well-known mark’ is unclear, leaving it up to the courts to decide whether or not a mark is indeed well-known since it reads as follows: “a mark which has become such to the considerable part of the public which consumes such goods or gets such services.” 
  2. The part of the law that deals with enforcing well-known marks likewise lacks a precise definition of what constitutes a well-known mark. Therefore, the protection offered to well-known marks is diminished by the lack of adequate guidelines on well-known marks for enforcement procedures. 
  3. While determining the rights of the parties, malafide adoption is not included in Section 29(4). The provisions dealing with prosecution and enforcement of well-known marks are destined to fade and, eventually, diminish the protection granted to well-known marks under the Trademarks Act, 1999 without effective legislative action on the aforementioned anomalies.

Frequently Asked Questions (FAQs) 

What parameters are used to determine whether a trademark is well-known?

  • That the brand is widely recognised by India’s population;
  • Persons employed in the distribution channels of the goods or services;
  • Number of consumers, either actual or future, for the goods or services;
  • the length, breadth, and region of any use of such brand;
  • the industry that deals with their products or services;
  • The history of effective trademark rights enforcement in particular, and the degree to which the trademark has been acknowledged as a well-known mark by any court or Registrar based on that history.

Is it advisable to conduct research before submitting a trademark application?

A trademark search is highly advised prior to trademark adoption as it will reveal any already-existing trademarks that have been registered in the Trademarks Registry through application or registration. As a result, it is recommended to conduct a search on the Trademarks Registry’s official website as well as an internet search to discover whether the proposed trademark is eligible for registration.

Why is it crucial to recognise the classes for registration?

Identification of the classes in which one desires to file a trademark application is important before doing so. The appropriate classes of currently offered goods and services, as well as classes where there is an intention to use them, should both receive applications. The NICE International Classification of Goods and Services, which is divided into 45 classes, covers the specifications. It covers classes 1 to 45, with classes 1 through 34 dealing with the specifications of commodities and classes 35 through 45 with the specification of services.

Can an application for the same trademark be filed in more than one class?

The trademark application may be submitted as a single-class application or a multiclass application.

Can international applicants also submit a trademark registration application in India?

An international trademark application may be submitted via the applicant’s trademark office under the Madrid Protocol (the Madrid Agreement Concerning the International Registration of Marks of 1891 which entered into force on December 1, 1995, and went into effect on April 1, 1996) The Office of Origin is another name for this trademark office. After receiving the application, the Office of Origin sends it on to the WIPO.

References 


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