“Well-Known Trademark”, you must have heard a lot about it during the judicial decisions given by the courts in the Trademark Infringement or the Trademark Objection cases but have you ever thought about what makes a mark a “well known” and how can you obtain your mark into a well known trademark.
After the Trade Mark Rules, 2017, went into effect in India, it became feasible to file a Trademark Application for a mark to be determined as a well-known trademark. Previously, the only way to have your trademark recognised as a well-known trademark in India was by a judicial decision. Now, Rule 124 of the Trade Mark Rules, 2017 allows the Registrar to determine whether a trademark is well-known.
The Trade Mark Rules, 2017, have provided a mechanism for trademark owners to have their trademarks recognized as well-known trademarks in India through a trademark application which goes through several stages and factors. The determination of a trademark as a well-known trademark provides enhanced statutory protection to the trademark and is a step in the right direction for the protection of intellectual property rights in India.
Compliance Calendar has written this article which will provide you with the detailed analysis of a well known trademark so that one can have a better understanding why it's different from the normal trademark and what are the remedies from which you can protect the well-known trademark from our in-hand experiences of dealing with the IP cases of Trademarks.
Section 2(1)(zg) of the Indian Trademarks Act, 1999 defines a "well-known trademark" as a mark that has acquired a substantial reputation in India and is known to a significant section of the public in India that uses such goods or receives such services that the use of such mark in relation to other goods or services would likely be taken as indicating a connection in the course of trade or rendering of services between those goods or services and the person using the mark in relation to the first-mentioned goods or services. The recognition of a trademark as well-known provides additional protection and certain benefits under the Trademarks Act.
To obtain the status of a well-known trademark, a trademark owner must demonstrate that their mark has acquired a significant reputation and recognition among consumers in the relevant market. This can be done by providing evidence of sales figures, advertising and promotional activities, market surveys, media coverage, and any other relevant information that can support the mark's reputation and distinctiveness.
The process of obtaining a well-known trademark status varies depending on the country or jurisdiction. In general, trademark owners can apply for the well-known trademark status with the national or regional trademark office by submitting the required documentation and paying the relevant fees. The trademark office will then examine the application and determine whether the mark meets the criteria for well-known status.
Sections 11(2), 11(6), 11(8), 11(9), and 11(10) of the Trademarks Act, 1999 address well-known trademark provisions. Let’s understand each provisions in detail:
1. Section 11(2): Protection of well-known marks across all classes
Section 11(2) of the Indian Trademarks Act, 1999 provides for the protection of well-known trademarks across all classes of goods and services. According to this section, a well-known trademark in India is entitled to protection not only in relation to the goods or services for which it is registered but also in relation to goods or services which are not similar to those for which the trademark is registered, provided that use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known trademark.
In other words, if a trademark is well-known in India, the owner of the trademark can prevent others from using a similar or identical mark in relation to any goods or services, regardless of whether they are related to the goods or services for which the trademark is registered. This means that even if a particular trademark is registered in only one or a few classes, it can still be protected in all tm classes if it is considered to be a well-known trademark.
The rationale behind this provision is to prevent dilution of the distinctive character of a well-known trademark and to ensure that the reputation and goodwill associated with such a mark is not exploited by others. The protection of well-known trademarks across all classes also ensures that consumers are not confused or misled by the use of similar or identical marks in relation to different goods or services.
2. Section 11(6): Factors to examine when assessing whether a mark is a well-known trademark
Section 11(6) of the Indian Trademarks Act, 1999 sets out the factors to be considered by the Registrar of Trademarks while determining whether a particular trademark is a well-known trademark in India. These factors are:
The knowledge or recognition of the trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark.
The duration, extent, and geographical area of any use of the trademark, in particular, the duration, extent, and geographical area of any promotion of the trademark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the trademark applies.
The duration and geographical area of any registration of, or any application for registration of, the trademark under this Act to the extent that they reflect the use or recognition of the trademark.
The record of successful enforcement 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.
The value associated with the trademark in the relevant section of the public, including the commercial value of the trademark, and the extent to which the trademark is recognized in the relevant market.
Any other factor relevant to establishing the status of a well-known trademark.
These factors are not exhaustive and other factors can also be taken into consideration depending on the specific facts of each case. If you need any help, the TM Attorneys at Compliance Calendar are competent to see your cases on merit.
3. Section 11(9): Factors not to be considered while determining well-known trademarks
Section 11(9) of the Indian Trademarks Act, 1999 sets out the factors that should not be considered by the Registrar of Trademarks while determining whether a particular trademark is a well-known trademark in India. These factors are:
The trademark's use in India is contrary to law.
Any dishonest practice by the owner or any user of the trademark.
Any use of the trademark that is likely to deceive or cause confusion.
Any use of the trademark that is detrimental to its distinctive character.
The nature of the goods or services to which the trademark applies.
These factors are excluded from consideration because they are either irrelevant to the determination of whether a trademark is well-known or because they may actually undermine the distinctive character of the trademark.
4. Section 11(10) – Onus on the Registrar to protect well-known trademark
Section 11(10) of the Indian Trade Marks Act, 1999 states that where a trademark has been registered in India or is the subject of an application for registration in India and the Registrar is satisfied that the trademark is well-known in India, then the Registrar shall protect such well-known trademark in India even if it is not registered or pending registration in India, provided that use of such trademark in India is likely to cause confusion or deception.
This provision places the onus on the Registrar to take proactive steps to protect well-known trademarks that may not be registered in India but are recognized as being famous in India. The Registrar has the power to prevent the use of such a trademark if it is likely to cause confusion or deception in the minds of the public.
The protection offered by this provision is particularly important for famous international trademarks that have not been registered in India but are used extensively in other countries. The provision ensures that the rights of trademark owners are protected even if their trademark is not registered in India.
If a well-known trademark is infringed, the trademark owner has several remedies available under the Indian Trademarks Act, 1999, including:
Injunction: The trademark owner can seek an injunction from the court to prevent the infringing party from using the trademark. The court may grant a temporary or permanent injunction depending on the circumstances of the case.
Damages: The trademark owner may also claim damages for any losses suffered as a result of the infringement. The damages may include both actual damages (such as lost profits) and punitive damages to deter future infringement.
Account of profits: The trademark owner may claim an account of profits from the infringing party. This means that the infringing party is required to account for any profits made from the use of the trademark.
Criminal action: In cases of willful and deliberate infringement, the trademark owner may also initiate criminal proceedings against the infringing party. The infringer may be fined or imprisoned under the Indian Penal Code.
Border measures: The trademark owner may also seek border measures to prevent the import or export of goods that infringe the well-known trademark. The Customs authorities can be notified to seize infringing goods at the border.
Indian courts have delivered several landmark judgments in cases related to well-known trademarks, which have established important precedents for the protection of such trademarks. However, it is important to note that the protection afforded to well-known trademarks is not absolute and may vary depending on the specific facts and circumstances of each case. Trademark owners should take proactive steps to safeguard their trademarks, including conducting thorough searches, monitoring the market for potential infringers, and enforcing their trademark rights through appropriate legal action.
Over the years, several landmark cases have been decided by Indian courts relating to well-known trademarks. Here are some of the landmark ones:
N.R. Dongre v. Whirlpool Corporation [(1996) 5 SCC 714]: In this case, the court held that the trademark 'Whirlpool' was a well-known trademark in India and that the respondent's use of the same trademark in a similar line of business amounted to passing off and infringement of the trademark.
Rolex SA v. Alex Jewellery Pvt. Ltd. [2009 (41) PTC 284 (Del.)]: In this case, the court held that the trademark 'Rolex' was a well-known trademark in India and that the use of a similar mark by the defendant amounted to infringement of the trademark.
Daimler AG v. Hybo Hindustan [AIR 1994 Del 2369] : In this case, the court held that the trademark 'Mercedes' was a well-known trademark in India and that the use of a similar mark by the defendant amounted to infringement of the trademark.
Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. [2018 (73) PTC 1]: In this case, the court held that the trademark 'Prius' was not a well-known trademark in India and that the defendant was entitled to use the mark.
These cases have helped establish the importance of well-known trademarks in India and have set important precedents for the protection of such trademarks. They have also highlighted the need for businesses to conduct thorough searches before adopting and using any trademark to avoid potential infringement issues.
In conclusion, Trademark registration is an essential tool for brand owners to protect their intellectual property rights in the market. The Trade Mark Rules, 2017, have played a vital role in strengthening the protection of well-known trademarks in India. The Trade Mark Rules, 2017, have provided enhanced statutory protection to well-known trademarks, which is beneficial not only for the brand owners but also for consumers and the overall intellectual property policy of the country.
The protection of well-known trademarks is crucial to ensure that consumers are not misled or confused by similar-looking or sounding brands. It also helps in maintaining the reputation and goodwill of the brand in the market. Overall, the Trade Mark Rules, 2017, have played a significant role in strengthening the protection of intellectual property rights in India. For any help in trademarks, do not hesitate to reach out at info@ccoffice.in / Connect at 9988424211.