Article explains what is what is a well-known trademark, Provisions relating to well-known trademark and Remedies against Infringement of Well-Known Trademark.
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Introduction to well know Trade Marks
The revised Trade Mark Rules 2017 have introduced a new process that enables the Registrar to declare a specific brand to be “well known.” In accordance with the new regulation, a trademark owner may submit a form TM-M application with a request to the Registrar for the designation of the mark as “well-known”. An extremely high level of protection against passing off and trademark infringement has been granted to a well-known trademark. Popular trademarks are acknowledged in India based on their reputation on a national, international, and cross-border level.
What is a well-known trademark?
DEFINITION-
As per Sec 2 (zg) of Trademark Act, 1999-
“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.”
Well-known trademarks have their goodwill and reputation protected across the country and across categories of goods and services, in contrast to other trademarks whose goodwill and reputation are restricted to a set designated geographical area and to a certain range of items.
The Trade Mark Registry is prohibited by law from registering any mark as a trademark that is confusingly similar to one of the well-known trademarks.
For instance, Alphabet Inc. has registered Google as a well-known trademark, making it the only company authorised to register the term “Google” for any type of product or service. Even though the service is unrelated to the Internet sector, only Alphabet Inc. is permitted to register “Google” as a trademark.
DAIMLER BENZ V. HYBO HINDUSTAN [AIR 1994 Del 2369]
In the matter of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the plaintiff sought an injunction to prevent the defendant from using his emblem and the phrase “Benz.” The court issued an injunction against the defendant’s contested use of the plaintiff’s logo despite acknowledging it as a well-known trademark due to its international goodwill and renown.
ROLEX SA V. ALEX JEWELLERY Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.)
In Rolex Sa v. Alex Jewellery Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.), the plaintiff launched a lawsuit against the defendant to stop him from using his trade name going forward because the defendants were selling phoney jewellery under the plaintiff’s trade name “Rolex.” The court determined that the plaintiff’s business was in the watch industry and that the trade name Rolex is well-known among consumers of watches. If artificial jewellery is discovered with the same trade name, the same demographic may presume it came from the plaintiff’s company. For the same grounds, the court issued an injunction against the defendant’s actions, finding Rolex to be a well-known trademark.
Provisions Pertaining To Well-Known Trademarks
Trade Mark Rules 2017
Rule 124– This rule enables trademark owners to submit a form TM-M to the Registrar asking for the grant of a “well-known” trademark. A mark was only deemed well-known following litigation, correction, and opposition held before the Honorable courts prior to the introduction of this law. The introduction of this rule and the associated procedure allows a trademark owner to request a well-known trademark without having to engage in any legal proceedings or corrections. Rule 124 guarantees that a trademark will receive the designation of “well-known” simply by submitting a request to the Registry.
Trademarks Act, 1999
Section- 11 (2) Protection of well-known marks across all classes
The protection offered to well-known trademarks is expanded under this section’s provision. This provision mandates that well-known trademarks be recognized and safeguarded across all kinds of goods and services. The section’s pertinent portion is reprinted here:
“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 trade mark.”
Sec 11 (6) Factors taken into consideration while determining the trademark as well-known
In order to protect well-known marks against infringement and misuse, WIPO adopted a Joint Resolution Concerning Provisions on the Protection of Well-Known Marks in 1999. This resolution included a list of elements that determine whether a trademark is well-known. Due to its membership in the World Trade Organization, India embraced these elements and included them in Section 11 of the Trademarks Act, clause 6.
These determining factors include:
- awareness of the mark in pertinent segments of the public;
- the duration, extent, and geographic area in which the trademark is used;
- the duration, extent, and geographic area in which the trademark is promoted with respect to the goods and services to which it applies;
- registration or application for registration of the trademark to the extent they reflect the use or recognition of the trade mark;
- the record of use; and
- the likelihood of confusion.
Remedies Against Infringement Of Well-Known Trademark
Remedies accessible to the trademark owner in the event of a well-known trademark misuse or infringement-
1. Prevent registration of similar and deceptive similar trademarks with respect to all classes of goods and services.
2. Request that the trademark be removed.
3. Prevent the trademark from appearing in any company names, organization names, or logos.
4. Punitive damages. The judiciary has ruled in various cases that punitive damages are to be used to deter infringers from utilizing popular trademarks and creating dilution.
Conclusion
Trademarks are essential to a company’s reputation building and brand recognition. It not only aids in establishing brand value but also in earning income. For trademark owners, the Well-Known tag was seen as the prize that everyone would strive for but only a select few would be able to obtain. In just two years, there has been a rise in the number of well-known trademarks from 78 to 117, with the Delhi High Court approving 45 of them. The introduction of The Trade Mark Rules has addressed the first issue. Multiple applications for well-known trademarks could perhaps be made presently.
While evaluating these petitions, the Registrar must be cautious because once a trademark is registered as Well-known, no one else is allowed to use a mark that is even remotely similar to it.
No comparable marks are permitted for any goods or services, making a well-known trademark a valuable intellectual asset for a corporation with many benefits. In order to preserve these well-known trademarks’ exclusivity and legitimate status, nevertheless, it is crucial.
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Disclaimer: The information presented here is only meant to be informative. Although this article was carefully crafted, it should only be regarded as general advice because it has been expressed in general terms. You should not act on the information provided in this article or refrain from acting upon it without first seeking professional advice since it cannot be relied upon to address your unique situation.
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