All You Need to Know About “Well-Known Trademarks”

Introduction

With the coming up of the new Trade Mark Rules 2017, a new procedure has been created that allows the Registrar to proclaim a particular trademark as “well known”. According to the new rule, a trademark owner can file an application in form TM-M with a request made to the Registrar for declaring the mark to be “well-known”. A well-known trademark has been vouchsafed with extraordinary protection and safeguards against passing off and infringement of such trademarks. Well-known trademarks are recognized in India on the basis of their reputation, nationally, internationally, and the cross-borders.

What is a well-known trademark?

The Trademarks Act, 1999, defines a 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 goods or services.”[i]

Unlike other trademarks whose goodwill and reputation are limited to a certain specified geographical area and to a certain range of products, well-known trademarks have their goodwill and reputation protected across the nation and across categories of goods and services. It is a law that restricts the Trade Mark Registry to allow and register any mark as a trademark which is deceptively similar to any of the well-known trademark. For instance, Google has been registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc. can register the term ‘Google’ for any category of goods and services. Even if the service is not related to the Internet industry, no other company but Alphabet Inc. can register ‘Google’ as its trademark.

In the case of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the defendant had been using the plaintiff’s logo and the word ‘Benz’ for which the plaintiff sought an injunction against such use of his logo. The court while recognizing the plaintiff’s logo as a well-known trademark on the ground of trans-border reputation and goodwill granted an injunction against the impugned use of the logo by the defendant.

In another case of Rolex Sa v. Alex Jewellery Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.)], the defendants were using the trade name “Rolex” of the plaintiff while dealing in artificial jewelry for which the plaintiff brought an action against the defendant in order to prevent him from using his trade name further. The court held that the plaintiff’s business dealt with watches, and the section of public using watches recognizes the trade name Rolex, for which it is a well-known trademark. The same segment of people if finds artificial jewelry with the same trade name might assume the artificial jewelry to be from the plaintiff’s business. For the same reasons, the court considering Rolex to be a well-known trademark granted an injunction against the acts of defendants.

Provisions related to well-known trademarks

1. Rule 124 of Trade Mark Rules 2017

This rule permits the trademark owners to file a request for a grant of a “well-known” trademark to the Registrar in form TM-M. Before the coming up of this rule, a mark was declared well-known only after proceedings, rectification, and opposition-held before the Hon’ble courts. With the advent of this rule and the procedure laid thereof, a trademark owner can request for a well-known trademark without getting into any proceedings or rectifications. Rule 124 ensures a trademark to be granted the tag of “well-known” merely by an application of request to the Registry.

2. Trademarks Act, 1999

i. 11 (2) Protection of well-known marks across all classes

The provision of this section extends the ambit of protection provided to the well-known trademarks. According to this clause, well-known trademarks are to be recognized and protected across all the classes of goods and services. A relevant portion of the section has been reproduced herein:

“A trademark which—

(a) is identical with or similar to an earlier trademark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.”

ii. 11 (6) Factors taken into consideration while determining the trademark as well-known

A Joint Resolution Concerning Provisions on the Protection of Well-Known Marks was adopted by WIPO in the year 1999 in order to protect the well-known marks from misuse and infringement, wherein various factors to determine a well-known trademark was enlisted. India being a member of the World Trade Organisation, adopted these factors and enshrined it in clause 6 of Section 11 of the Trademarks Act. These determining factors include – [ii]

1. Knowledge about the mark in relevant sections of the public;
2. the duration, extent, and geographical area in which the trademark is used;
3. the duration, extent, and geographical area in which the trademark is promoted with respect to the goods and services to which it applies;
4. registration or application for registration of the trademark to the extent they reflect the use or recognition of the trademark;
5. the record of successful enforcement of the rights in that trademark including the record stating that the trademark has been recognized as well known by any court or Registrar.

iii. 11 (9) – Conditions not required for well-known trademark registration

The section specifically mentions certain conditions which need not be required for the purpose of granting of a well-known trademark. These conditions are-

1. That the TM has been used in India;
2. That the TM has been registered;
3. That the application for registration of the trademark has been filed in India;
4. That the trademark is well known in or registered in any other jurisdiction other than India;
5. That the trademark is well-known to the public at large in India.

It can thus be stated that for a trademark to be granted protection in India, it is not necessary that the mark owner has his business in India or its trademark is registered within India, nor is it required that the trademark is known to the masses as a whole.[iii] Thus, the particular provision provides for the concept of the trans-border reputation of the trademark.

iv. 11 (10) –Obligation on the Registrar

It is an obligation on the registrar that in case of a dispute and/or infringement the registrar must protect the interest of the well-known trademark against the identical ones and also must take into consideration and notice the ill intention and malafide motive of the complainant or the opponent.

Filing of a well-known trademark

With the incorporation of the new Trademark Rules 2017, a trademark owner can directly file an application for a well-known trademark to the Registrar. The said application of request should be accompanied by a statement of the case, relevant documents, evidence, and a fee of Rs. 1,00,000/- which has already been prescribed. It is also mandatory that the application is to be filed online through comprehensive e-filing services of the trademark. Once the application is received, the application shall be considered in accordance with the documents submitted.[iv]

Documents needed to be submitted while filing application[v]

• Statement of the case – mentioning the claimant’s right on the trademark and describing the claim of a trademark to be a well-known trademark.
• Details of successful enforcement of rights in case the trademark has been recognized as well-known by the court in India or TM Registrar.
• Copy of judgment of any court or the Registrar wherein the trademark has been recognized as well-known.
• Evidence showing the claimant’s right and justifying his claim. Such evidence shall include data/documents showing-
  • Use of trademark or any application filed for registration of a trademark, or registration obtained.
  • Annual sale turnover of the business of the claimant.
  • Actual or potential number of customers under the said trademark.
  • Publicity and advertisement of the said trademark along with the expenses incurred thereof.
  • Knowledge or recognition of the trademark in the relevant section of the public across the globe.

All the documents along with the evidence are needed to be submitted in a PDF format with a resolution of 200 X 100 dpi on A4 size paper and the total size of the documents not exceeding 10 MB.

Remedies available for the trademark owner on misuse or infringement of the well-known trademark

1. Prevent registration of similar and deceptive similar trademarks with respect to all classes of goods and services.
2. Request removal of the infringing marks.
3. Prevent incorporation of the trademark in the name or logo of any organization or corporate name.
4. Punitive damages- Judiciary has opined in several cases that punitive damages shall prevent the infringers from using and causing dilution of well-known trademarks. In the case of Time Incorporated v. Lokesh Srivastava [2005 (30) PTC 3 (Del.)], the court held that in IP cases the court shall grant both punitive and compensatory damages. In the instant case, the court granted Rs. 5 lakh as punitive damage and Rs. 5 lakh as compensatory damage to the plaintiff for the reason of the infringement.

About the Author: Sonal Sodhani, BA LLB student from Bharti Vidhyapeeth, Pune, Intern at IP and Legal Filings, and can be reached at support@ipandlegalfilings.com.