Protection Of Well-known Marks
Some Trademarks are so commonly and widely known to a large mass of people that using the same or similar trademark to any goods of any class would be an infringement. These trademarks that are known to a large number of people who are associated with that good are called well-known trademarks.
Section 2(zg) of The Trademark Act, 1999 provides that “a well-known trademark 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 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.”
The statutory protection to Well-Known marks was provided in India only after 1999 and prior to 1999, the common law of passing off was in effect. The passing off action was applied in one of the cases i.e., Kirloskar Diesel Recon Pvt. Ltd. V. Kirloskar Proprietary Ltd.1, the Court extending protection the mark ‘Kirloskar’ stated that in case of trademarks which have become almost a household word and a variety of works are undertaken, if the defendant adopts and identical or similar mark as this for their own business even if they do not undertake the same activity, the plaintiff can still bring about a passing off suit.
Once Trademark Act, 1999 came into force, with the guidelines from WIPO, India included statutory provisions to protect Well-Known Trademarks.
Factors determining a Trademark as a Well-Known Mark
Section 11(6) of the Trademark Act, 1999 provides for a list of factors that needs to be considered to determine if a trademark was a well-known trademark.
According to the section, the following points can be elicited –
- Knowledge of the Trademark in relevant sections of public: what constitutes relevant section of public is explained in Section 11(7) of the Trademark Act, 1999. According to the section, “the Registrar shall, while determining as to whether a trade mark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account—
Whether the mark is well-known or not is to be determined with view of facts. WIPO’s Joint Recommendation on Well-known marks states that determination of a mark as well known or not may be done by opinion polls and consumer surveys as well.
- the number of actual or potential consumers of the goods or services;
- the number of persons involved in the channels of distribution of the goods or services;
- the business circles dealing with the goods or services, to which that trade mark applies.”
In the case of Rolex SA V. Alex Jewellery Pvt. Ltd., the Delhi High Court took into account the advertising done for Rolex in the media since 1947. The Court also considered registrations and held that relevant sections of the public had knowledge of the trademark ROLEX in relation to watches.
- Duration, extent and geographical area of any use of that trade mark: WIPO’s Joint Recommendation on Well-known marks makes the duration, extent and geographical coverage of use an important consideration to determine whether a mark is well-known or not. It also stated that an actual use of the mark in the state in which it is registered is not required and use of the mark in neighboring territories, territories which use the same language, territories who have the same media coverage or territories that have close trade relations is enough.
- Duration, extent and geographical area of promotion of the trade mark: In the case of R. Dongre amd Anr. V. Whirlpool Corporation and Anr.2, the trademark “Whirlpool” had no actual use in India at that time. The Supreme Court, held that a mere advertisement of a trademark even without an actual introduction of the good in the market can be considered to be use of the mark under this section.
- Duration and geographical extent of registration of or application for registration of said trade mark: The Registrar, while determining if a mark is well-known will consider its registration under various other jurisdictions like the USPTO, EUIPO, CIPO etc. In Honeywell International V. Pravin Thorat & Ors.3, the Court held that the mark “Honeywell” was extensively and continuously being used all across the world and the same is also protected under the common rights law. The mark was also declared as a well-known mark by three domain arbitration cases.
Conditions not required for well-known trademark registration
In addition, the Trademark Act, 1999 provides for a list of conditions that are not required for the registration of a well-known trademarks. Section 11(9) states, “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: —
- that the trade mark has been used in India;
- that the trade mark has been registered;
- that the application for registration of the trade mark has been filed in India;
- that the trade mark—
- is well known in; or
- has been registered in; or
- in respect of which an application for registration has been filed in, any jurisdiction other than India; or
- that the trade mark is well-known to the public at large in India.”
Protection of well-known marks
Section 11(2) of the Trademark Act, 1999 states, “A trade mark which—
- is identical with or similar to an earlier trade mark; and
- 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.”
According to this section, a trademark which is identical or similar to an earlier trademark in a case where the earlier trademark is a well-known mark, the new mark will not be registered in any of the classes as the registration would lead to unfair advantage of the new mark over the earlier mark and might cause damage to the reputation of the earlier mark. Through this section, law clearly protects well-known marks from being used in anyway by any person.
Section 11(10) states that “it is an obligation on the registrar that in case of a dispute and/or infringement the registrar must protect the interest of the well-known trademark against the identical ones and also must take into consideration and notice the ill intention and malafide motive of the complainant or the opponent”.
In Daimler Benz Aktiengesellschaft & Anr V. Hybo Hindustan4, the Court, while restraining the Defendant from using the mark “Benz” stated that adopting the name “Benz”, which is widely known to every family that has ever used a quality car, to name ordinary goods, especially like that of undergarments would deteriorate the status of the name. And any person who finds the term “Benz” automatically associates the term with automobile and nothing else.
Remedies for infringement
In case there is an infringement by way of using an identical or slightly similar trademark as a well-known trademark, the following remedies are granted to the aggrieved:
- Preventing of registration of identical or similar trademark in respect to any class of goods and services.
- Requesting of removal of any infringing mark if already allotted registration.
- Prevention of incorporation of the trademark in any form, name or logo by any company or organization.
- Punitive damages- Judiciary, time and again has awarded punitive damages in cases of infringement of well-known trademarks. In Kabushiki Kaisha Toshiba Trading V. Mr. S.K.Sil & Anr.5, the Delhi High Court awarded punitive damages of Rs. 5 lakh to the Plaintiff as means to deter those waiting and tempted to imitate the trade mark of others from infringing well-known marks.
Protection of well-known marks is extremely necessary to maintain the quality, character, reputation and goodwill of a trademark. In case another company is granted a trademark that is widely known, people tend to believe that the products (even if they are not of the same class) would be from the well-known mark; and if the quality is deterred, the reputation of the well-known mark is shattered.
However, protection of well-known trademarks could lead to monopoly in the mark itself by the company. With the case of Apple trying to shoo away a lot of companies willing to use a fruit as their respective trademarks, it is important to bring about some limitations to avoid such blatant misuse of exceptional powers.
1 Kirloskar Diesel Recon Pvt. Ltd. V. Kirloskar Proprietary Ltd AIR 1996 Bom 149
2 R. Dongre amd Anr. V. Whirlpool Corporation and Anr Appeal (Civil) 10703 of 1996
3Honeywell International V. Pravin Thorat & Ors 222 (2015) DELHI LAW TIMES 533
4 Daimler Benz Aktiengesellschaft & Anr V. Hybo Hindustan AIR 1994 Del 239
5 Kabushiki Kaisha Toshiba Trading V. Mr. S.K.Sil & Anr CS(OS) No.1298/2010