Well Known Trademarks

Edited by – Honey Verma


This article is written by Rishab Kumar, law student of GGSIPU, Delhi.


Introduction

Google, Apple, Microsoft, Pepsi, Nike, as you read these words, different images conjure up in your mind. These images have become so embedded in your mind that even if you come across that particular spectrum of colors consisting of blue, red, yellow, green, you know the product is from Google. This is a sign of a well-known trademark.

In India, Well Known Trademarks have been accorded extraordinary proprietary rights against the registration of indistinguishable or misleadingly similar marks as well as against their abuse. This special protection concurred to well-known trademarks is a result of precedents and pronouncements that have been judiciously advanced by the Courts in India. Here it becomes necessary to make reference that legal protection was accorded to well-known marks in India just in the year 1999. Before that well-known marks were secured under the common law principles of passing off. The Indian Trademark Registry’s website provides an exhaustive list of well-known trademarks in India. At present, the list has 81 trademarks announced as “well-known” by judicial and quasi-judicial authorities in India.

The Trademarks Act, 1999 (hereinafter, “Act”), defines a well-known trademark under Section 2(zg).

In the case of Daimler Benz v. Hybo Hindustan [1], the defendant had been utilizing the plaintiff’s logo and the word ‘Benz’ for which the plaintiff sought injunction order against such use of his logo. The court while recognising the plaintiff’s logo as a well-known trademark on the ground of trans border reputation and goodwill granted injunction against the impugned use of the logo by the defendant.

In another case of Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors.[2], the trade name ‘Rolex’ of the plaintiff was being used by the defendants for which the plaintiff brought an action against the defendant. The court held that the plaintiff’s business was into watches, and the section of public utilising watches recognises the trade name Rolex, for which it is a well-known trademark. A similar section of individuals if finds artificial jewellery with a similar trade name might expect the artificial jewellery to be from the plaintiff’s business. For similar reasons, the court considering Rolex to be a well-known trademark granted injunction order against the acts of defendants.

Factors to be considered for the determination of well-known marks

Section 11(6) and Section 11(7) of the Act-With the perspective of the exigency to protect well-known marks against abuse and increasing cases of falsifying, the WIPO (World Intellectual Property Office) in the year 1999 adopted a Joint Resolution Concerning Provisions on the Protection of Well-Known Marks which defined certain factors to be considered while determining whether a trademark is well known or not and India being a member of WTO (World Trade Organization) has consolidated those factors under Section 11(6) of the Act for determination of well-known trademark.

  1. Knowledge about the mark in the relevant section of the public: What establishes relevant section of the public has been specified under Section 11(7) of the Act and provides that the Registrar while determining whether a mark is well-known in a relevant section of the public shall take into account the actual number of consumers, people involved in the distribution or business circles dealing in the goods or services.
  • Duration of use, extent and geographical area of trademark: The Statute doesn’t set out the term of use that would be required to determine whether a mark has procured uniqueness. In any case, the legal principle with respect to the equivalent has been settled through precedents.

However, recently, the Delhi High Court in ITC Ltd. v. Britannia Industries[3] has settled the standard with respect to terms of use by holding that to obtain secondary meaning, it is not important that item is in the market for a number of years. If a new idea is appealing to the consumers, it can become a hit on its own.

  • Duration, Extent and geographical area of promotion of mark: Apart from deciding the degree and geographical use of the mark, the Registrar additionally considers the degree of promotion of the mark

In the case of R. Dongre and Anr. v. Whirlpool Corporation and Anr.[4], the Supreme Court, in order to determine the transborder reputation of the trademark “Whirlpool’, held that even advertisement of a trademark without the existence of goods in the market can be considered as the usage of the mark.

  •  Duration and geographical extent of registration of the mark and record of successful enforcement of the mark in other Jurisdictions: Under this Clause, the Registrar while deciding if a brand name is well-known or not will consider registration of the mark in different Jurisdictions, for example in the USPTO, EUIPO, CIPO and so on.

In the case of Honeywell International v. Pravin Thorat & Ors.[5], the Court stated that the mark can get protection even under the common law rights. In order to determine whether the trademark ‘Honeywell’ was well-known or not, the Court considered the fact that the mark had been declared as a well-known trademark in three domain name arbitration cases.

Filing of a well-known trademark

A trademark owner can directly file an application to the Registrar for the registration of a well-known trademark as per the new Trademark Rules 2017. The said application for registration should be accompanied by a statement of the case, pertinent documents, evidence, and a fee of Rs. 1,00,000/ – which has already been prescribed. Moreover, it is compulsory that the application is to be documented online through thorough e-filing services of a trademark. When the application is received, the application shall be considered according to the documents submitted.[6]

(List of Documents required along with the filing of application is given on http://www.ipindia.nic.in/writereaddata/Portal/IPOtherNotice/1_31_1/Public-Notice.pdf )

Remedies on infringement of the well-known trademark

  1. Prevent registration of a similar and deceptive similar trademark with respect to all classes of goods and services.
  2. Request removal of the infringing marks.
  3. Prevent incorporation of the trademark in the name or logo of any organization or corporate name.
  4. Punitive damages- Judiciary has opined in several cases that punitive damages shall prevent the infringers from using and causing dilution of well-known trademarks.

In the case of Time Incorporated v. Lokesh Srivastava[7], the court held that in IP cases the court shall grant both punitive and compensatory damages. In the instant case, the court granted Rs. 5 lakh as punitive damage and Rs. 5 lakh as compensatory damage to the plaintiff for the reason of the infringement.


[1] AIR 1994 Del 2369

[2] 2009 (41) PTC 284 (Del.)

[3] CS (COMM) 1128/2016

[4] Appeal (Civil) 10703 of 1996

[5] 222 (2015) DELHI LAW TIMES 533

[6] http://www.ipindia.nic.in/writereaddata/Portal/IPOtherNotice/1_31_1/Public-Notice.pdf

[7] 2005 (30) PTC 3 (Del)


Written by –

Author Name – Rishab Kumar

Published on – 11/08/2020