• Avanee Tewari

UNDERSTANDING THE PROVISION OF WELL-KNOWN TRADE MARKS IN THE INDIAN CONTEXT



With change in societal behaviour i.e. a gigantic leap towards social media marketing and innovative advertising ideas, the influence of trade marks on people along with infringement of famous trade marks has increased tremendously. Multinationals spend millions of dollars to maintain their brand popularity globally. In view of the same, acquiring the status of a well-known trade mark is the highest honour that can be conferred upon a mark. The concept of protection of well-known trade marks is different from the concept of trade mark protection i.e. protection of well-known marks focuses on preserving the uniqueness of a mark by protecting it against dilution and tarnishment as opposed to general focus of protecting consumers from confusion.


Origin of the concept of well known trade marks


The Paris Convention of Industrial Property in 1883, for the first time, set out certain guidelines for protection of well-known trade marks. Article 6bis of the Paris Convention reads as follows:


‘(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.’


Subsequently, the TRIPs Agreement was drafted to accommodate the concept of well known trade marks as endorsed in the Paris Convention. Article 6bis of the Paris Convention was incorporated as TRIPs Articles 16.2 and 16.3. [1]


In contrast to the Paris Convention, which deals with well known trade marks with respect to goods only and provides protection against use in connection with identical or similar goods, the TRIPs Agreement mandates protection to be extended to registered trade marks against use in connection with goods and services both. Further, it also provides protection against dissimilar goods and services to the extent the use is found to create an association of origin to the owner of the well known mark.


Interestingly, both the Paris Convention and the TRIPs Agreement do not lay down any procedures per se and hence, leave it to the signatory countries to make their own rules and regulations for registration of well-known trade marks.


Concept of well known trade marks under Trade and Merchandise Marks Act, 1958


India has been inexplicitly protecting well known trade marks from a very long time. Prior to the Trade Marks Act, 1999 (‘TM Act, 1999’), the Trade and Merchandise Marks Act, 1958 (‘TMM Act, 1958’) was regulating trade marks in India. However, there was no specific provision in the TMM Act, 1958 defining or protecting well known trade marks, which were at that time protected under common law.


However, Section 47(1) of the TMM Act, 1958[2] spoke about ‘Defensive registration of well-known trade marks’. In view of the same, the TMM Act, 1958 prevented the use of marks which could be perceived as indicating a connection in the course of trade to the goods of the well known mark’s proprietor. As a result, several proprietors of well-known marks began registering their marks either in all classes or in maximum classes of interest.


In Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd.[3] (the Caltex Case), the Deputy Registrar rejected the Opponent’s contention that the Applicant had applied for the mark ‘CALTEX’ in bad faith. The Deputy Registrar held that the competing goods and trade channels were different. Further, it held that the Opponent’s reputation was established only with respect of the goods for which its marks were used and did not extend across all classes of goods. However, on appeal, the Court was of the view that the potential market for goods under the competing marks is similar in the sense that the goods of both the parties are not special goods. Further, since the Opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade, there shall be a likelihood of confusion between the goods under the competing marks and therefore, an increased probability of the public believing that any goods with the mark “CALTEX” on them would be the goods of the Opponents.


In Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan[4], the issue pertained to the use of the mark BENZ along with a “three pointed human being in a ring”, in connection with undergarments manufactured by the Defendant. The court held that ‘Such a mark is not up for grabs—not available to any person to apply upon anything or goods. That name . . . is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.’ Further, it opined that the benefit of trade mark law did not extend to a person who mala fidely tries to derive benefit from the reputation of another mark.


In another case of Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors.[5], the issue was over the use of the mark ‘BATAFOAM’ for ‘rubber foam used in manufacturing mattresses, sofas, cushions, and automobile seats’. The Defendants contended that the parties’ respective businesses were different, and that the Plaintiff had no registration for the mark BATA for mattresses, sofas, cushions, automobile seats, etc. Further, the Defendants contended that since their mark ‘BATAFOAM’ was not identical in appearance to the Plaintiff’s mark BATA, there could be no passing off. However, while ruling in favour of the Plaintiff, the Court observed that BATA is a famous brand in India for quality footwear and that the Defendants had no plausible reason for adopting a ‘BATA’ comprising mark as the same is the name of the founder of the Plaintiff. The Court held that the use of the mark “BATA” on any product shall create an association in the mind of the unwary purchaser of average intelligence and imperfect recollection between the goods of the Plaintiff and the Defendants, which was not the case.


Concept of well known trade marks under Trade Marks Act, 1999 and Trade Mark Rules, 2017


Being a signatory to the Paris Convention and the TRIPs Agreement, India amalgamated the concept of well known trade marks in its Trade Marks Act, 1999 and again in the Trade Mark Rules, 2017 .


The Trade Marks Act, 1999 contains specific provisions referring to well-known marks - Sections 2(1)(zg), 11(2), 11(6), 11(7), 11(9), 11(10)[6]. While Section 2(1)(zg) of the TM Act, 1999 refers to the definition of a well known trade mark, Sections 11(6), (7), and (9) of the TM Act, 1999 provide guidelines for deciding whether or not a mark falls within the ambit of a well known trade mark.


On establishment of a mark as a well-known trade mark, the Trade Marks Registry is bound under the law to protect the said mark from other identical and/or deceptively similar marks across all classes of goods and services. Some examples of factors that need to be taken in consideration while determining whether a mark is a well-known mark or not under the TM Act 1999 are as follows:


a) The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark; b) The duration, extent and geographical area of any use for that trademark; c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears;

d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark;

e) 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;

f) The number of actual or potential consumers of the goods or services; g) The number of persons involved in the channels of distribution of the goods or services; h) The business circle dealing with the goods and devices to which the trademark applies; i) Whether the mark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar.


In Rolex SA v Alex Jewellery Pvt. Ltd. & Ors.[7], the Plaintiff filed a case against the Defendants so as to restrain them from dealing with artificial jewellery or any other product using the trade name ‘Rolex’ which was associated with the Plaintiff exclusively. The Court observed that the Plaintiff’s trade mark was a well known trade mark under Section 2(1)(zg) of the TM Act, 1999 since the relevant public using watches recognize the trade name Rolex and associate it with high quality and price of the Plaintiff. Thus, keeping in mind the provisions of Section 11(6) of the TM Act, 199, the use of an identical trade mark by the Defendant for artificial jewellery would create a likelihood of confusion in the minds of the relevant public and might create an assumption that the products are those of the Plaintiff company. Thus, the Court ruled in favour of the Plaintiff and prohibited the use of the mark ‘Rolex’ by the Defendant.


In Suzuki Motor vs Suzuki (India) Limited[8], the issue was the infringement of the mark ‘SUZUKI’ of Suzuki Motors by Suzuki (India) Limited. The Court observed that by virtue of registration of the mark ‘SUZUKI’ in 1972 and its presence in India since 1982 and in addition, the widespread publicity and promotion undertaken by Suzuki Motors, the trade mark ‘SUZUKI’ of the Plaintiff had become a well known trade mark. Thus, the unauthorized use of the same by the Defendant would lead to dilution of the well known trade mark of the Plaintiff and would also create a likelihood of confusion amongst the relevant public who shall associate the goods of the Defendant with those of the Plaintiff.


Further, it is pertinent to note that prior to the enactment of the Trade Mark Rules, 2017, a trade mark could be declared as a well known trade mark only as a result of opposition, rectification or infringement proceedings. In such a case, the Registrar or the Court would only after a full-fledged contested litigation examining the evidence put forward by both parties declare a mark as a well-known trade mark. In other words, in case of infringement or passing off, in order to enforce and safeguard their rights in their well known trade mark, the proprietors of the well known trade mark would have to approach the Registrar or the Court for relief.


However, in addition to the above-mentioned process by courts and tribunals, Rule 124 of Trade Mark Rules, 2017[9] provides potential proprietors of well known trade marks to apply directly to the Indian Trade Marks Registrar vide Form TM-M along with the prescribed fee of Rs. 1,00,000/- for determination and declaration of their mark as a well-known mark.


However, in line with the Public Notice[10] dated May 22, 2017 issued by the Office of the Controller General Patents, Designs and Trademarks, Government of India, there are certain documents which need to be filed along with the application. The same are:

Statement of case describing the Applicant’s rights in the trade mark and describing the Applicant’s claim that the trade mark is a well known trade mark;

Evidence in support of the Applicant’s rights and claim viz. evidence as to use of trade mark, any applications for registration made or registration obtained, annual sales turnover of the Applicant’s business based on the subject trade mark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trade mark, evidence regarding publicity and advertisement of the said trade mark and the expenses incurred therefore, evidence as to knowledge or recognition of the trade mark in the relevant section of the public in India and abroad;

Details of successful enforcement of rights, if any, relating to the said trade mark in particular extent to which trade mark is recognized as well known trade mark by any Court in India or Registrar of Trade Marks;

Copy of the Judgment of any court in India or Registrar of Trade Marks, if any, wherein the trade mark is determined as well-known trade mark; etc.


Conclusion


At present, there are about 97 trade marks[11] that have been declared and listed as well known trade marks in India. The Trade Mark Rules, 2017 ease the process for a mark to be declared as a well known trade mark. This provides an opportunity for potential applicants to have their marks accepted and declared as well known in India so that their marks are protected from being infringed or passed off by any unauthorised person. However, in contrast to the usual opposition or infringement proceedings wherein the Courts analyse and scrutinise voluminous evidence before declaring a mark as a well known mark, Rule 124 just entails the submission of an application to the Registrar and a duty for the Registrar to ‘invite objections from the general public’ which may or may not be addressed. Thus, in view of the above, it is clear that for proper implementation of the Trade Mark Rules, 2017, the Registrar must follow a cautious approach while considering applications for determination of marks as well known.






[1] 16.2–Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

16.3–Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.


[2] Section 47(1) of the TMM Act: Defensive registration of well-known trade marks—Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in Section 46, the mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section.



[3] Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. [AIR 1969 Bom. 24].


[4] Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan [AIR 1994 Del. 239].


[5] Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors [AIR 1985 All. 242]


[6] Section 2(1)(zg) states: “well-known trade mark,” in relation to any goods or service, means 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.”

Section 11. Relative grounds for refusal of registration 11(2)–A trade mark which—

  1. (a) is identical with or similar to an earlier trade mark; and

  2. (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,

shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark 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.

11(6)–The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark. (ii) the duration, extent and geographical area of any use of that trade mark. (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the gods or services to which the trade mark applies. (iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark. (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court on Registrar under that record.

11(7) – The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account:

(i) the number of actual or potential consumers of the goods or services. (ii) the number of persons involved in the channels of distribution of the goods or services. (iii) the business circles dealing with the goods or services. to which that trade mark applies.

11(9) – The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:-

(i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) That the application for registration of the trade mark has been filed in India; (iv) That the trade mark— a)Is well known in; or b)Has been registered in; or c)In respect of which an application for registration has been filed in, any jurisdiction other than India; or (v) that the trade mark is well-known to the public at large in India

11(10) - While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall (i) protect a well-known trade mark against the identical or similar trade marks; (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.




[7] Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors. 2009 (41) PTC 284 (Del.)


[8] Suzuki Motor vs Suzuki (India) Limited - https://indiankanoon.org/doc/38028297/


[9] Rule 124: Determination of Well Known Trademark by Registrar. — (1) Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.

(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.

(3) For the purpose of determination, the Registrar may call such documents as he thinks fit.

(4) Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.

(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.

(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.



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


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



The article was originally published on www.lexology.com on June 01, 2020 and can be accessed here.

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