How To Recognize Well-Known Trademarks In India

28th March, 2020 - 8:57 am Categories: Trademark 0 Comments

Well-known Trademark plays an important role in global markets and in identifying symbols and sign that are widely known to the significant general public and enjoys a fairly high reputation. The first time Well-Known trademark was discussed was in the Paris Convention of Industrial property in 1883, wherein the said convention set out certain guidelines for protection of well-known trademark but they did not lay down any procedure per se and hence left it to the signatory countries to make their own rules and regulations for registration of such marks. All the countries globally have accepted the significance of Well-known Trademark including India.

India has given well-known Trademark exceptional rights over registration of identical or deceptively similar marks and also against their abuse. The law makers in India have made specific provisions for safeguarding the Well- known trademarks in the Trademark Act of 1999 and the Trademark Rules of 2017, as earlier the well- known trademarks were protected under Common law from where the passing off was formulated.  Well known trademark is defined under the Trademark Act, 1999 (‘the Act’) as

 “in relation to any goods or services, 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.”[1]

India has been protecting well-known trademarks from a very long time and before having it defined under the Trademark Act of 1999, India was following common law to protect the same.  The Trade and Merchandise Marks Act, 1958 did not provide for any specific provisions under which Well-Known Trademarks was defined, and it was only protected under passing-off.  Furthermore, there have been judgments by various High Courts in India, which provided for protection of the same:

There are many cases In India for protection of Well-known Trademark and one of the most famous cases was of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan[2]. In this case, the Plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark BENZ for selling its undergarments. The Court in deciding the case acknowledged the logo of the plaintiff as a well-known trademark and hence restrained the Defendant from using the impugned mark by stating that there was no valid reason as to why the defendant would adopt the name “Benz”, which is associated with one of the finest engineered cars in the world and has a trans-border reputation and goodwill.

In another case of Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors.[3], the Plaintiff filed a case against the defendants who were dealing with artificial jewellery, and using the trade name “Rolex” associated with the plaintiff. The court held that the plaintiff’s trade mark was a well-known trademark since the general public using watches recognize the trade name Rolex and the defendant using the same name for dealing with artificial jewellery would create confusion in the minds of the general public and might create an assumption that the products are those of the plaintiff company. Hence, the court granted injunction against the use of the trade name Rolex by the defendants.  

In Microsoft Corporation v Kurapati Venkata Jagdeesh Babu,[4] the Delhi High Court held that the mark MICROSOFT was a well-known mark since it is being used and known to most of the public throughout the world, while also considering extensive evidence in relation to advertising and publicity for the mark in India. The court held that the defendants were not allowed to use the same mark “either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got a unique goodwill and reputation”.

PROCEDURE OF REGISTRATION

Before the new Trademark Rules of 2017 came into force, the Registry had made a list of well-known Trademark and uploaded on the website of Trademark Registry, but after the New Rules were introduced in 2017 March for registration of well- known trademark, the registration has to be done by filing an application online to register mark as Well- Known mark.  These New Rules help in determining and declaration of Well-known Trademark.

I. To determine whether the mark is Well- known or not, the registry  will consider following things[5]:

1. That the general public has knowledge about the said mark and are able to recognize the alleged well known mark and the recognition obtained by way of promotions.
2. The duration, extent and geographical area of any use or promotion of that trademark.
3.  The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
4. The number of actual or potential consumers of the goods or services.
5. The number of persons involved in the channels of distribution of the goods or services.
6. The business circle dealing with the goods and devices to which the trademark applies.
7. Wherein a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.

Section 11 of the Trademark Act, 1999 provides protection of Well- Known Trade mark and protection for the marks which are registered in good faith.

II. Filing a Mark as Well- know Trademark in India

According to Rule 124 of the Trademark Rules, any person can apply for Registration of Well- Know Trademark. But there are certain steps which need to be followed for filing a mark as Well-Known Trademark:

1. Form TM – M- : For getting mark registered as Well- Known Trademark one need to file Form an application on the form TM-M.
2. The prescribed fee as per the first schedule of the rules in Form TM- M is Rs. 1,00,000/-.
3. That the Application will be filed online through the e-filing services of the trademark made available at official website i.e. www.ipindia.nic.in
4. Furthermore, there are certain documents which need to be filed along with the form[6]
5. Statement of case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark,
6. Evidence in support of the applicant’s rights and claim viz. evidence as to use of trademark, any applications for registration made or registration obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred therefore, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad, o
7. Details of successful enforcement of rights, if any, relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks,
8. Copy of the Judgment of any court in India or Registrar of Trademarks,  if any, wherein the trademark is determined as well-known trademark,
9. The size of the document submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
10. After the submission of the form, the office will consider on the basis of the documents submitted.  It may or may not be considered by the Registry.
11. If accepted, then said mark will be added in the list of Well- Known Trademark.
12. If one objects for inclusion of a particular Trademark in the list of Well- Known Trademark then they can file objection to the Registry of Trademark by stating its reasons for objection.
13. Copy of such objection will be given to the Applicant and they can file counter statement for such objections within stipulated time.
14. That after seeing both the side of the parties the final decisions will be given.
15. If the Applicant mark is included in the list of well- known trademark the same shall be informed to the Applicant.
16. Same shall also be informed to the Trade mark Journal and the mark shall be included in the list of well- known Trademark, will also be available on the website. 

LIST OF WELL- KNOWN TRADEMARKS IN INDIA

There are about 97 Well- Known Trademark, as per the list updated by the registry[7]. However, there are numerous trademark applications that are pending before the Registry, which are yet to be declared as well-known trademarks in India. The list of the existing well-known trademarks in India is mentioned in the table below:

CONCLUSION

The scope of protection of well-known trademarks will be determined after a comprehensive consideration of the above factors, as mentioned in the procedure.  The Registry is very particular while considering the mark as Well -Known Trademark as once the mark is in the list of Well- Known Trademark then no one can take that mark in any goods and services, therefore the Registry goes into voluminous documents and lot of evidence is taken into consideration, otherwise this will be of no use as per the new Trademark Rules of 2017, which has been implicated and if it is not followed it will lead to a lot of legal proceeding related to the same. Therefore, to obtain protection for this kind of well-known marks, strong arguments should be submitted as to the degree of the relevance of the relevant goods, the degree of recognition of the well-known mark and the intention of the Applicant to file the petition for declaration of the trademark as a well-known.

Author: Aishani Singh, Associate at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at  aishani@khuranaandkhurana.com.

References:

[1] section 2 (1) (zg) of Trademark Act, 1999

[2] AIR 1994 Del 2369

[3] 2009 (41) PTC 284 (Del.)

[4] 2014 (57) PTC

[5] Section 11(6) & 11(7) of Trademark Act 1999

[6] http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf

[7] https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx