WELL KNOWN TRADE MARK
INTRODUCTION:
A well known trade mark is a famous mark, symbol or logo which represents a company’s hard earned goodwill and reputation.
We can study about well known trade mark from section 2[1] zg of Trade mark act 1999.
According to section 2[1] zg:
“WELL KNOWN TRADE MARK is 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.”
SIGNIFICANCE OF WELL KNOWN TRADE MARK:
Well known trade mark brings the substantial and commercial value to the trade mark owners. Unauthorized use of such trademarks comes under trade mark infringement. If someone uses such mark then it will create confusion among the consumers about the quality of the product, and it will definitely affect the reputation of the product those who comes under registered mark.
E.g. suppose if new clothing manufacture company copies a mark of a well known company and produces similar but low quality products then it will definitely affect the reputation of the well known company.
FILLING OF A WELL KNOWN TRADE MARK:
An owner of a trade mark can directly file an application to the registrar to make his/her trade mark as a well known trade mark under Rule 124 of trademarks rules 2017. The said application of request should be accompanied with statement of cases, relevant documents, evidences and a fee of rs. – 1, 00, 000/- which has been prescribed. One can file the application through comprehensive e-filling services of trademark. The registrar will consider the provisions of section 11[6] to 11[9] 0f the trademarks act 1999 when such an application submitted to him.
CRITERIA FOR DETERMINING A WELLKNOWN TRADEMARK:
If a proprietor wants to register his/her trademark as a well known mark then he/ she must have to depend on these criteria:-
- The mark must be known to the public of India at a large.
- The number of actual consumers of the goods and services.
- The number of people involve in the channels of distribution of goods and services.
- The duration, extent and geographical area of any use of such trade mark.
- A party asserting that their trade mark is well known and famous must clearly establish that their mark is viewed and used by many users as well known or famous mark and submit evidence to the records the his/her trade mark can be accepted as well known trade mark.
BENIFITS OF REGISTRATION AS A WELL KNOWN TRADE MARK:
A well known mark can be registered even if it is not used in India. It is beneficial to multinational companies for over all brand protection. If companies don’t use registered trademarks for five years and three months, they are open to cancelation for non-use. However well-known marks are not subject to such provision.
- Trademarks are those marks which have specific range where they are known or spread in small geographical area but in case of well known trademarks , these are spread all over country caring a large consumer base with a good reputation. This is the main difference between a TRADEMARK and a WELL KNOWN TRADEMARK.
REMEDIES OF WELL KNOWN TRADEMARK INFRINGMENT:
A well-known mark owner can initiate legal proceedings against the infringer declaring the unfair business.
There are two types of remedies available for the registered mark owner, civil and criminal.
Civil dealings can be initiated in the District court through claiming Damages and also through Injunction.
In case of injunction temporary or permanent injunction can be filed.
In case of damages the amount of damage will be decided by the District court.
Till now there are 137 well known trademarks available and we can find them through ‘IpIndia’ official site.
SOME IMPORTANT CASES RELATED WELL KNOWN TRADEMARK:
COCACOLA VS BISLERI:
In this case bisleri sold the trademark MAZA to Coca-Cola through a master agreement.
After few years bisleri again field a trademark in Turkey with the name of MAZA, and after that coca cola filed a petition regarding infringement of their trademark against bisleri.
Bisleri defended that coca cola can only register the mark in India and can only use it inside India , but at the end final judgement decided that if someone registered a mark then he/she can use it inside or outside of the country.
WHIRLPOOL CO VS ANR V. N R DONGRE:
In this case the plaintiff whirlpool had not registered their mark in India. However by virtue of use and advertisement in international magazines had a worldwide reputation and used to sell their machines in the US embassy in India. Meanwhile, the defendant started using the impugned mark on its washing machines. Thereafter the plaintiff brought an action against the defendant and the court decided that the plaintiff had an established transborder reputation in India and hence the defendants were injuncted from using the same for their products.
These are some important cases regarding well known trademark.
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