We discussed about the well-known trademarks definition, recognition and its protection under the international treaties in Part-I of the article. Now let’s see the legislation relating to the well-known trademarks in India. The first statutory law relating to the trademarks was the Trade Marks Act, 1940 which had similar provision like the UK Trade Marks Act, 1938.
In 1958, the Trade and Merchandise Marks Act, 1958 was enacted and it was repealed by the Trade Marks Act, 1999, which is the current governing law related to registered trademarks. Thereafter many changes have been bought to the Trade Marks Act, 1999 for instance protection of well-known trademarks even though they are not registered or used in India, in addition to making some changes to keep it in harmonization with the obligations under the TRIPS Agreement. The Act allows the proprietors of the well-known trademarks to raise opposition even at the time of registration of a similar mark, giving them special rights.
In India before a proper legislation came into effect, the protection for well-known trademark was given by way of common law principles like passing off. In Daimler Benz Akietgesellschaft v Hybo Hindustan, 1993 the manufactures of Mercedes Benz sought injunction against the defendants who were using the famous three pointed star in the circle and the word Benz, the court granted injunction against the defendants who were using these marks for selling apparel.
Now let’s see the provisions under the Trade Marks Act, 1999. According to section 11(6), the following are to be considered while determining whether a trademark is a well-known trademark or not:
- Knowledge about the mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark. The term relevant section includes the actual consumers, the persons involved in the distribution of the goods and services under such a trademark and the business circle dealing such goods and services.
In Rolex S A vs Alex Jewellery Pvt. Ltd & Ors., 2009, the defendants were involved in selling artificial jewellery under the mark Rolex. The Court after considering the relevant provisions was of the view that the segment of the public which uses the watches of the category/price range as the watches of the plaintiff, Rolex is a well-known trademark. If the said segment of public come across the the artificial jewellery sold by the defendant under same mark Rolex, it creates confusion and is likely to believe that the said jeweller has connection with the plaintiff.
- Duration, extent and geographical area of any use of that trademark. There is no explicit time period mentioned in the statute regarding the duration of use of the mark in order to treat it as a well-known trademark. In Indian Shaving Products Ltd. vs Gift Pack & Anr (1998), the court considered the fact that even the sale concerned was less than a year, the plaintiff’s had achieved great sales and advertised widely. Hence there is no requirement of long duration of use.
- Duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, of the goods and services to which the trademark applies. In Marico Ltd. Vs Madhu Gupta, the Court considered that huge amount of money spent by the plaintiff for advertising and granted them injunction.
- Duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark.
- The record of successful enforcement of the rights in that trademark; in particular to what extent it has been recognised by the courts or registrar as a well-known trademark.
Section 11 (7) of the Act provides that the Registrar shall consider certain criteria for determining whether a trademark is known or recognised in relevant section of public. The criteria are the number of actual or potential consumer of the goods and services, the number of persons involved in the distribution of the goods and services and the business circles dealing with the goods and services.
Section 11(8) of the Act provides that if a trade is determined as a well-known trademark in at least one relevant section of the public in India by any court or Registrar, the registrar shall consider that trademark as a well-known trademark for registration.
Section 11(9) of the Act provides that the Registrar while determining whether a trademark is a well-known trademark should not consider certain conditions. The conditions are whether the trademark has been used in India or the trademark is registered or the application for registration has been filed in India and whether the trademark is well-known or has been registered or an application for registration is made in the jurisdiction other than India and whether the trademark is well-known to the public at large.
Section 11(10) of the Act provides that the Registrar while considering the application for registration of trademark shall protect the well-known trademark against the identical or similar trademarks.
The Act also provide for protection of a well-known trademark against all classes. Section 11(2) of the Act lays down a trademark will not be registered if it is similar or identical to the earlier trademark though registered with respect to goods or services which are not similar to those of the latter trademark, to the extent the earlier trademark is a well-known trademark and the use of the later will be detrimental to the distinctive character or repute of the earlier well-known trademark.
Before the enactment of the Trade Marks Rules, 2017, the Registrar or the court could declare a trademark as a well-known trademark only at the time of opposition, rectification or infringement proceedings. But now after the enactment of the new rules the owner of a trademark can now apply to the Trademarks Office, to consider his/her trademark as a well-known trademark by paying fees of Rs.1,00,000/-. The application must be supported with document like statements of case describing the applicant’s rights and evidence in support of that right and claim. The Registrar may invite objections from the public to be filed within 30 days from the date of such invitation. The Registrar after examination if satisfied can determine the trademark as a well-known trademark and shall publish it in the trademark Journal and include it in the well-known trademarks list maintained by the Registrar.
If a trademark is declared as a well-known trademark it will be protected across all classes of goods and services. In an infringement or passing off proceedings privilege is given to a well-known trademark against the mark of the infringer irrespective of whether they belong to the same class of good and services or not. The owner of a well-known trademark will have remedies some of them are to seek cancellation of infringing mark, to prevent others from using the well-known trademark as part of their trade names etc. Till now 81 marks have been declared as well-known trademarks. With the changes made in the procedure for determining a trademark as well-known trademark, the trademark owners now may apply to the Registrar to declare their trademark as a well-known trademark. With this, the list of the well-known trademarks may increase soon.