Navigating the Legal Landscape of Well-Known Trademarks: A Comprehensive Guide

Introduction

According to the World Intellectual Property Organization (WIPO), “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.”The Registrar can now declare a trademark “well-known” according to the new system established by the Trade Marks Rules. As per recently implemented Rule 124, any trade mark owner can file a request in Form TM-M requesting the Registrar to declare a trademark ‘well-known’. Trademarks that are “well known” are granted exceptional protection by the Indian Trademark Law, which also protects them from the vices of infringement and passing off. Well-known trademarks in India are acknowledged by the Indian Intellectual Property Office based on their reputation across national, international, and geographic borders.

What is a well-known trademark?

The term “Well-Known trade mark” has been defined under Section 2(1)(zg) of the Trade Marks Act, 1999, as “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 indication 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.”

In contrast to other trademarks, whose goodwill and reputation is limited to a certain specified geographical area and to a certain range of products, well-known trademarks have its goodwill and reputation protected across the nation and across categories of goods and services. The Trade Mark Registry is prohibited by law from accepting and registering any mark that is confusingly similar to a well-known brand.

In the case of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the defendant had been using the plaintiff’s logo and the word ‘Benz’ for which the plaintiff sought injunction against such use of his logo. The court issued an injunction against the defendant for the alleged use of the plaintiff’s logo, recognising it as a well-known trademark due to its international recognition and goodwill.

In another case of Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors. [2009 (41) PTC 284 (Del.)], Plaintiff filed a lawsuit against defendant to stop him from using plaintiff’s trade name “Rolex” in his dealings with artificial jewellery. The court held that the plaintiff’s company sold watches, and that Rolex is a well-known trademark for the watch industry and the general public who wears watches. The same segment of people who find artificial jewelries with the same trade name might assume the artificial jewelry to be from the plaintiff’s business. Onsimilar grounds, the court granted an injunction against the defendants’ actions because it believed that Rolex was a well-known trademark.

Benefits to a Well-known Trademark Owner

In the event that a well-known trademark is misappropriated or infringed upon, the trademark owner has the following recourse:

Prevent the registration of confusingly identical trademarks across all classes of products and services.
Request that the infringing mark be removed.
Prevent any business or organisation from using the trademark as part of its name or symbol.
Punitive damages. In some instances, the courts have ruled that punitive fines should be used to deter infringers from utilizing and diluting well-known trademarks. The court concluded in Time Incorporated v. Lokesh Srivastava that in IP matters, the court must award punitive as well as compensatory damages. In this instance, the court awarded the plaintiff Rs 5,00,000 (US$6,740) in punitive damages and Rs 5,00,000 in compensatory damages for infringement of the trademark in the name or logo of any organization or corporate name.

Provisions related to well-known trademarks

Rule 124 of Trade Mark Rules 2017

As per this rule, trademark holders are allowed to submit a request in form TM-M to the Registrar in order to register a trademark as a “well-known” trademark. Before this regulation was adopted, a mark could only be considered well-known if the honourable courts initiated proceedings, made rectification, and opposition and pronounced the trademark to be a “well known trademark.”. A trademark owner can now seek a well-known trademark without facing legal action or corrections thanks to the introduction of this rule and the process outlined in it. Rule 124 guarantees that a trademark can be designated as “well-known” simply by submitting a request to the Registry.

2.Trademarks Act, 1999

11 (2) Protection of well-known marks across all classes

The scope of protection afforded to well-known trademarks is expanded by the provision of this section. Well-known trademarks must be acknowledged and safeguarded in accordance with this provision for all types of goods and services. Relevant portion of the section has been reproduced herein:

“A trade mark which—

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

(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) Factors taken into consideration while determining the trademark as well-known

In order to safeguard well-known marks from infringement and misuse, WIPO adopted a Joint Resolution Concerning Provisions on the Protection of Well-Known Marks in 1999. The resolution identified a number of criteria that indicate whether a trademark is well-known. As a member of the World Trade Organisation, India embraced these principles and codified them in Section 11 Clause 6 of the Trademarks Act. These determining factors includes –

Knowledge about the mark in relevant sections of the public;
the duration, extent and geographical area in which the trademark is used;
the duration, extent and geographical area in which the trademark is promoted with respect to the goods and services to which it applies;
registration or application for registration of the trademark to the extent they reflect the use or recognition of the trade mark;
the record of successful enforcement of the rights in that trade mark including the record stating that the trademark has been recognised as well known by any court or Registrar.

iii. 11 (9) – Conditions not required for well-known trademark registration

The section specifically mentions certain conditions that need not be required for the purpose of granting a trademark the status of a well-known trademark. These conditions are-

That the TM has been used in India;
That the TM 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 registered in any other jurisdiction other than India;
That the trademark is well-known to the public at large in India.
It can thus be stated that for a trademark to be granted protection in India, it is not necessary that the mark owner has his business in India or its trademark is registered within India, nor is it required that the trademark is known to the masses as a whole. Thus, the particular provision provide for the concept of trans-border reputation of trademark.

11 (10) –Obligation on the Registrar

The registrar bears the responsibility of safeguarding the well-known trademark against similar ones in the event of a dispute or infringement. Additionally, the registrar is required to consider and take notice of any malicious intent or ulterior motives on the part of the opponent or complainant.

Filing of a well-known trademark

With the incorporation of the new Trademark Rules 2017, a trademark owner can directly file an application for a well-known trademark with the Registrar. The aforementioned request application must be submitted with a statement of case, all pertinent documentation, supporting documentation, and the predetermined fee of Rs. 1,00,000/-. Additionally, it is required that the application be submitted online via the extensive trademark e-filing services. Following receipt, the application will be evaluated in light of the supporting documentation.

Documents needed to be submitted while filing application

Statement of case – mentioning the claimant’s right on the trademark and describing the claim of trademark to be a well-known trademark.
Details of successful enforcement of rights in case the trademark has been recognised as well-known by the court in India or TM Registrar.
Copy of judgment of any court or the Registrar wherein the trademark has been recognised as well-known.
Evidences showing the claimant’s right and justifying his claim. Such evidences shall include data/documents showing-

Use of trademark, or any application filed for registration of trademark, or registration obtained.
Annual sale turnover of the business of the claimant.
Actual or potential number of customers under the said trademark.
Publicity and advertisement of the said trademark along with the expenses incurred thereof.
Knowledge or recognition of the trademark in relevant sections of the public across the globe.

All the documents along with the evidence must be submitted in the form of an A4 document in PDF format with a resolution of 200 x 100 dpi, with a maximum file size of 10 MB.

Conclusion

The establishment of a company’s reputation and brand awareness depend heavily on its trademarks. It helps generate revenue in addition to building brand value. The Well-Known tag is viewed by trademark owners as the goal that everyone aspires towards, but only a chosen few achieve. As of now, there are total of 281 well known trademarks registered in India. The introduction of The Trade Mark Rules has made a significant contribution to the domain of trademark . Multiple applications for well-known trademarks could perhaps be made presently. Because no one else is permitted to use a mark that is even slightly similar to one that has been registered as well-known, the Registrar must use caution when assessing these applications. Since similar marks cannot be used for any products or services, a well-known trademark is an extremely beneficial intellectual asset for a business. However, it is essential to maintain the distinctiveness and legal standing of these well-known trademarks.

Author: Annu