What is a well-known trade mark?
To know what a well-known trademark is, first we need to have clear picture of what exactly a trademark means. In a general context trademark means a mark used by a business to identify itself and which helps in distinguishing products and services of an individual form those of others, thereby removing any kind of confusion in the minds of public regarding the source of the services or products. Now let’s see what is the legal definition given by the Trade Marks Act, 1999 to the word trademark, Section 2 (1) (zb) lays down that “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”.
In the modern era with the industrial revolution and the development of the living conditions there has been a tremendous increase in the trade and commerce. With the supply of good quality of goods and services under the trademarks by their owners to the public, some of the trademarks have become well-known and highly reputed in the trade fraternity and in the public. A well-known trademark in a general context means a mark which is widely known to the relevant section of the public and which enjoys a high reputation. The term relevant section means the consumers, manufacturing operations and the persons involved in the selling of the goods and services bearing such trademarks.
The Trade Marks Act, 1999 under Section 2 (1) (zg) lays down the meaning of the expression well-known trademark. The section says that “well-known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or 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”.
Recognition and Protection of Well-Known Trade Mark
The first significant question is, what are the criteria for a trademark to be determined as a well-known trademark and the second is what is the protection given to well-known trademarks. A Joint Resolution concerning provisions on protection of well-known marks was adopted by the General Assembly of the World Intellectual Property Organization (WIPO) and the Assembly of the Paris Union in 1999. The resolution lays down the criteria to determine a trademark to be a well-known trademark, which are the degree of reputation of the mark, the period and geographical extent of its use, the extent of publicity associated with the mark, the number of registrations worldwide and the instance of its successful enforcement. The provisions relating to the protection of the well-known trademarks was first introduced by Article 6bis of the Paris Convention.
Article 6bis lays down that the countries of the Union undertake, ex officio if their legislation so permits or at the request of an interested party, to refuse or cancel the registration or prohibit the use of any mark which is similar or mere reproduction or imitation of a mark which is recognized as a well-known trademark 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. The provisions will also apply when the essential part of a well-known trademark is reproduced or imitated which is liable to create confusion.
The provisions of Article 6bis of the Paris Convention has been incorporated in the TRIPS Agreement under Articles 16.2 and 16.3. The Article 16.2 and 16.3 lays down as follows:
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- 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.
The provisions relating to the protection of well-known trademark evolved from the Paris Convention to the TRIPS Agreement. The Paris Convention provided provisions for the well-known trademarks in respect of goods alone whereas the TRIPS Agreement provided with respect to the services also.