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Well-Known Trademark

The phrase “well-known trademark” was originally defined in the Paris Convention for Protection of Industrial Property in the year 1883, when the standards for the safeguarding of well-known trademarks were considered but didn’t set down any conclusions. Henceforth, it was left to the signing nations to establish their own rules for the registration of such trademarks. Article 6 of the original edition of the Paris Convention established the broad concept of territoriality with regard to the protection of trademarks. It signifies that the trademark registration in one country doesn’t grant the exclusive property of the same trademark in other countries. Under the Paris Convention, the aforesaid requirement only applied to commodities having the same name or resemblance.

Following the Paris Convention, the definition was discussed in Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as TRIPS) in 1995, where the guidelines for the protection and enforcement of well-known trademarks were established under Articles 16 (2) and 16 (3) of the TRIPS Agreement. In order to assess a well-known trademark, Article 16(2) considers only the member nations’ knowledge of the trademark in the relevant industry, but Article 16(3) specifies when a trademark with a different name may be protected. 

Such rules include:

a) Using a well-known trademark for distinct products or services should imply a link between the two goods and services, and

b) such use is likely to harm the interests of the brand’s owner.

All TRIPS Agreement signing nations were obligated to safeguard renowned marks of identical or different trademarks that met the aforementioned requirements.

The Indian perspective on the word “trademark” was having its origin in Section 478 of the Indian Penal Code, 1860 which has been revised by the Indian Merchandise Marks Act, 1889. Today, the phrase “well-known trademark” is defined under Section 2(ii)(zg) of the Indian Trademark Act, 1999 as follows:

“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”.

Before the Act, the recognition of a well-known trademark in India was in the jurisdiction of the courts or tribunals, whether they deemed the brand to be well-known or not. However, it took the owner a long time to fight antagonistic views in a court of law. With the adoption of appropriate legislation, the trademark owner may now contact the Trademark Registry directly to get their products/services recognised as “well-known trademarks.”

Provisions concerning a well-known trademark

Every nation in the world has its own trademark law in place to recognise and protect well-known brands. The well-known trademarks in India are protected and governed under the current Trademark Law, 1999.

The TRIPS agreement was regarded as one of the most significant multilateral trade accords in the field of intellectual property law. In 1995, India became a signatory member. India also signed the General Agreement on Trade and Tariffs in Uruguay in 1994, becoming a member of the WTO. Certain aspects of the Paris Convention also applied to TRIPS signatory nations. Following that, in 1998, India signed the instrument of accession to the Paris Convention. To comply with the Paris Convention and TRIPS agreement, India adopted its first law, “The Trademark Act, 1999,” and “The Trademark Rules 2002,” which went into effect in 2003. The Trademark Act of 1999 covers the following significant clauses regarding “well-known trademarks.”

Section 11(2) of the act outlines the procedures for protecting well-known trademarks. It specifies that well-known trademarks in all categories of goods and services must be safeguarded. However, a combined reading of clauses (a) and (b) of Section 11(2) provides for the refusal of registration of a trademark if it is identical to a similar or earlier trademark, or if it is similar to a trademark existing earlier in the name of a different proprietor, or if it is a well-known trademark and the registration of the second one without proper reason will give an unfair advantage to the distinctive character or market repute of the earlier trademark.

Section 11(6) of the Trademark Act addresses the list of factors to be considered when determining a well-known trademark. WIPO established a joint resolution addressing the protection of well-known trademarks in 1999 in order to safeguard well-known marks against malicious intent and infringement. As a member, India embraced all of these considerations and codified them in Section 11. (6).

These considerations include:

1. as a result of promotion, understanding or recognition of the trademark among relevant segments of the population, including India;

2. the trademark’s duration, scope, and usage in the specific geographical area where it is registered;

3. The length, scope, or geographical area in which the trademark is advertised in relation to the products and services to which it is applicable;

4. Trademark registration or application to the extent that they indicate the trademark’s usage;

5. A track record of effective trademark enforcement in that specific region, demonstrating that the trademark has been recognised and widely known by the registrar or court.

According to Section 11(7) of the Trademark Act, in terms of determining whether the trademark is renowned or acknowledged in the relevant section for the purpose specified in sub-section (6), the registrar must consider three factors: the number of exact or positional consumers of goods and services; the individuals involved in the proper distribution system; and the marketing group dealing with the goods and services to which the trademark generally applies.

Section 11(9) of the Trademark Act addresses the conditions that are not essential for determining a well-known trademark. These are the circumstances:

1. The trademark is either registered or in use in India.

2. A trademark registration application has been submitted in India.

3. That the trademark is registered or has been submitted for registration in a country other than India and is well-known;

4. That the trademark is widely recognised throughout significant sections of India.

As a conclusion of the above, it may be argued that in order to register well-known trademarks, it is not required for the trademark to be registered in India, nor for the trademark to be recognized to the public at large. The clause allows for the preservation of the trademark’s global reputation.

The duty of the registrar is addressed in Section 11(10) of the Trademark Act. The registrar must preserve the well-known trademark when deciding on an application for objection to the identical registration of a trademark. When considering the issue, the registrar must evaluate the opponent’s evil motivation and intention.

The registration of a well-known trademark

The most recent regulation, “The Trademark Rule, 2017,” states that a person intending to register his well-known trademark may file an application with the registrar of the Trademark Registry in the right format of TM and pay an application fee of one lakh rupees. Along with the documentation, the applicant must provide the necessary documents, proof, and a description of the case. When deciding whether a trademark is eligible for registration, the registrar considers the relevant considerations outlined in Sections 11(6) to 11(9) of the Trademark Act of 1999. The application must be submitted electronically using the Trademark Registry’s e-filing facility.

Legal remedies available for Well-known trademark infringements.

1. Prohibit the registration of trademarks that are identical or confusingly similar in all product and service classes.

2. Request that the infringing mark be removed.

3.Prevent the trademark from being incorporated into the name or logo of any organisation or business entity.

In some instances, the courts have imposed punitive penalties in order to deter infringers and those who duplicate registered well-known trademarks. In Time Incorporated vs. Laokesh Srivastava, the Delhi High Court ruled that where there is a violation of intellectual property law, the court must award both punitive and compensatory damages. The court in the aforementioned instance awarded 5 lakhs in punitive damages and 5 lakhs in compensatory damages.

Relevant cases

In India, there are various cases involving the protection of well-known trademarks. These examples are as follows:

Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan, 10 November, 1993, AIR 1994 Delhi 239, 1994 RLR 79

It is one of the most significant examples of well-known trademark protection. Mercedes-Benz, a German vehicle manufacturer, was the plaintiff in the preceding case. The defendant was involved in the creation of an undergarment with a “Benz” tag. According to the Hon’ble Delhi High Court, placing the name of a highly designed and world-class respected product on underwear would dilute the identity of such a product. The court ruled that it would be a serious violation of trademark law if the plaintiff Mercedes-mark, Benz’s which has a three-pointed star sign, was duplicated by someone engaged in the trade of underwear, such as the defendant or anybody else. According to the court, the star emblem cannot be used on anything.

Rolex Sa vs Alex Jewellery Pvt Ltd & Ors on 9 April, 2009

In the preceding case, the plaintiff, Rolex, a Swiss watch business, sued the defendant for trademark infringement because the defendant had used the term “Rolex” on their manufactured jewellery boxes. The court barred the defendant from using their trademark because the plaintiff’s trademark was well-known and highly respectable, and the defendant’s use would cause confusion among consumers who would believe the jewellery was from the plaintiff’s company, “Rolex SA.”

By Priyasha Sen Gupta