A GUIDE TO WELL-KNOWN TRADE MARKS

 “There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words.”

– Hon’ble Mr. Justice Mahinder Narain, Hon’ble High Court of Delhi

(Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan; 1994 PTC 287)

Abstract: Intellectual Property has many types, one of them being trade marks. Within the realm of trade marks, there are well-known trade marks. These marks are famous trade marks transcending the Class of goods/services they are used on. The purpose of the present article is to study in detail the concept of well-known trade marks, legal evolution of its protection and to chart out the factors which are utilised to determine a mark to be a well-known trade mark and other incidental issues arising on this account. The paper further goes into the extended protection granted to well-known trade marks in India in comparison to other trade marks. It appears that under the present statutory regime in India as well as under common law, the well-known marks have been given a wide protection in India but the Court’s stance on when to exercise its power to determine a mark to be a well-known mark appears to be murky.

Introduction

A trade mark can be defined as any indicia of origin applied to a product in such a manner which enables the consumer to distinguish between the products of one party from another.[1] As per European Court of Justice, the essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.[2]However, it is quite possible that two products/services in completely separate fields use the trade mark in a manner that there is neither any scope of confusion nor any scope of diluting the brand distinctiveness on account of another mark. For example, the use of the mark “Zoom” for a television channel and the use of the mark “Zoom” for a video conferencing application. However, there are certain trade marks which if used on any products/services whatsoever will be perceived as being connected to the original trade mark to the extent that there is either customer confusion as to source, association or connection.

Such trade marks are known as “Well-known trade marks”. The well-known trade mark comes to signify certain qualities that transcend the goods and services for which it is registered.[3] The Hon’ble Courts have observed that even if the fields of operation are different, it is possible that the average consumer makes a link with the prominent well-known mark.[4] As the words suggest, such marks are famously known amongst wide section of the public and any use of the same even for completely different goods/services creates an impression in the mind of the consumer that they are somehow related to the goods/services under the famous already known mark.

Secondly, even if there are cases where the customer might not be confused on account of use of the mark on different products, there is also likelihood that the subsequent usage causes detriment to the distinctive character or repute of the concerned trade mark cutting its goodwill slowly and consistently. This concept is termed as “trade mark dilution”. In such a situation, the goods of the trade mark owner may lose their sheen to the strata of the society for which they are intended. The goods of the trade mark owner may then cease to be a status symbol or a fashion statement which would be detrimental to the trade mark owner.[5] In Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan[6], the Hon’ble Court was of the view that using a name of a very high priced and extremely well engineered product on an under wear will dilute the name of the name of the product.

The Intellectual Property policies are generally guided towards removing the said situations for the purposes of public interest, increasing fair competition and gaining economic revenue. The products bearing well-known marks are sold at premium prices capitalizing on the value of the brand, leading to increased revenue for the owner as well as the Government. The importance of well-known trade marks can be gauged from the following passage from the above mentioned decision of the Hon’ble High Court of Delhi:

“I think it will be great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the “Mercedes Benz”, its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or any else, Such a mark is not up for grabs – not available to any person to apply upon anything or goods.”[7]

The Defendant in the said case was using the mark “Benz” for underwear in the following manner[8]:

 

Over the years, since the Paris Convention for the Protection of Industrial Property, 1883, developments have happened on guiding factors on how to determine well-known trade marks. The factors can be considered as multiple and strict. However, once the threshold is crossed, the benefits of the owner of well-known trade marks are far higher than in case of owner of a trade mark which is not declared well-known.

Under a legal instrument, well-known marks were dealt with for the first time in the Paris Convention for the Protection of Industrial Property, 1883 (hereinafter also referred to as “Paris Convention”) under Article 6^bis.[9] As per Article 6^bis (1), the member countries of the Paris Convention are obliged to refuse to register or to cancel if already registered, and prohibit the use within their territory of marks which are liable to create confusion with another trade mark already well-known in another member country where a competent authority of the said country of registration or use has held the same to be well-known mark in that country.

Under the Paris Convention, the above mentioned obligation on member countries was only for identical or similar goods. It was open for member countries to expand it for different goods. Further, the Paris Convention had not laid down any procedure for protection of well-known marks and hence it was open for all countries to devise their own procedure for protection a well-known mark.[10] Further, whether a mark is a well-known trade mark or not was also to be determined by the domestic law.[11]

Interestingly, by virtue of the Paris Convention a trade mark need not be used in the country to be declared well-known as long as it is well-known in another member country. The South African Supreme Court, interpreting Article 6^bis held that the mark of the Plaintiff was protectable as a well-known trade mark despite having never been used as such at that time in South Africa.[12]

Article 6^bis (2)requires that there should be at least a period of five years after the date of registration when an action for removal of a mark (which is a reproduction of a well-known mark) can be taken under Article 6^bis (1). It was left open for the member countries to provide for a minimum period before which the owner of well-known trade mark could take an action against prohibition of use of its mark. However, such a restriction on the protection of well-known mark was not to apply in cases where the well-known mark was being used, reproduced or imitated by a person in bad faith.

AGREEMENT ON TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS

In the year 1995, agreement on Trade Related Aspects of Intellectual Property Rights (hereinafter also referred to as “TRIPS”) set minimum standards for protection and enforcement of Intellectual Property Rights. Article 16.2 and Article 16.3 of TRIPS agreement[13] deal with well-known trade marks.

Article 16.2 provides a single factor for countries to take into account when determining a mark as well-known trade mark, being knowledge of the trade mark in the relevant sector of the public. However, the game changer is Article 16.3 which extends the protection of well-known marks to dissimilar goods/services provided the following two conditions are fulfilled:

1. The use of the well-known mark for different goods or services indicates a connection between those goods or services; and
2. The interests of the owner of the registered trademark are likely to be damaged by such use.

Thus the prohibition against use of a well known trade mark, under Paris Convention, was to apply only when the impugned violative use was in respect of identical or similar goods. A position that was changed by the TRIPS agreement. Vide Article 16 of TRIPS Agreement, it was decided that Article 6^bis of Paris Convention, 1967 shall apply mutatis mutandis to services as well as to goods or services.[14]

Thus, all signatories to TRIPS agreement are bound to protect famous marks for dissimilar goods or services provided the above two conditions are satisfied as a minimal method of enforcement.

JOINT RECOMMENDATION CONCERNING PROVISIONS ON THE PROTECTION OF WELL-KNOWN MARKS

Considering that neither the Paris Convention nor the TRIPS agreement gave any definite guidelines on how a competent authority in a member country will determine a mark to be a well-known trade mark, a joint recommendation was made by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization for Member States around the year 2000.[15] The same was termed as “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks”. The said joint recommendation provided for inclusive factors (not exhaustive) that may be taken into account for determining a mark to be a well-known trade mark. The same are enumerated herein:

1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; and
6. the value associated with the mark.[16]

The recommendation made it clear that these factors are not pre-conditions and the determination in each will depend upon the particular facts of that case.[17]The recommendation further gives factors to be considered to determine “relevant sector of the public” such as:

1. actual and/or potential consumers of the type of goods and/or services to which the mark applies;
2. persons involved in channels of distribution of the type of goods and/or services to which the mark applies; and
3. business circles dealing with the type of goods and/or services to which the mark applies.[18]

Under Article 2 (2) (b), the recommendation further obligates a member country to consider a mark as well-known trade mark if it is well-known in at least one relevant sector of the public in the member country. Interestingly, the recommendation also provides for factors which are not to be a pre-condition for determining whether a mark is a well known trade mark being:

1. That the mark has been used in; registered in or applied for registration in the member country where protection is sought; or
2. That the mark is well known, registered or applied for registration in any other jurisdiction; or
3. That the mark is well known by the public at large in the Member State.[19]

Thus, comprehensive parameters were set internationally to enable a state to determine a mark to be a well-known trade mark.

Indian position on Well-Known Trade Marks

India’s statutory protection to Trade Marks dates back to the year 1860.[20] The term “trade mark” was first defined in India in the Indian Penal Code, 1860. Subsequently, in 1889, the British Parliament enacted the Indian Merchandise Marks Act, 1889 wherein the term “trade mark” was defined to having reference to the Section 478 of the Indian Penal Code as amended by the Indian Merchandise Marks Act, 1889.[21] Section 3 of the Indian Merchandise Marks Act, 1889 provided for the amended definition of “trade mark” under Section 478 of Indian Penal Code. The first trade mark law in Indian providing specifically for registration of Trade Marks was the Trade Marks Act, 1940. The said Act also provided for civil proceedings for violation of rights in the trade marks. Prior to that the issue of infringement, passing off etc. were solved by application of Section 54 of the Specific Relief Act, 1877 and the registration obtained by a declaration towards ownership of a trade mark under Indian Registration Act, 1908.[22]Considering, the penal law for violation of trade mark rights was already provided in the Indian Penal Code, the 1940 Act did not provide for penal provisions.

TRADE MARKS ACT, 1940

The Trade Marks Act, 1940 (hereinafter also referred as “1940 Act”) provided for inclusive definition of “mark” as device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof.[23]The Act also provided for definition of “trade mark” as:

“ “trade mark” means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication o:f the identity of that person”[24]

Under the 1940 Act, we see for the first time statutory recognition of well-known trade marks in India. The Act did not define a well-known trade mark. However, as per Section 38 (1) of if there existed a mark:

1. which consisted of an invented word; and
2. had become well-known in respect of the goods for which it was registered and used,

the proprietor of that mark was given an option to register that mark even for those goods for which it was not being used. This was subject to the qualification that such goods must be of such a nature that if the well-known trade mark is used on the them, such use would be likely to be taken as indicating a connection in the course of trade between those goods and the person entitled to use the well-known trade mark in relation to first mentioned goods. This concept was known as defensive registration of trade marks.

The importance of defensive registrations was due to the fact that under the 1940 Act, the infringement was only for the goods in respect of which the mark was registered.[25]Defensive registration under Section 38 (1) were not restricted to only similar goods for which the mark was already registered but also different goods, provided such that use of the mark on such goods had the propensity to indicate a connection with the proprietor of registered well-known trade mark. This is corroborated by reading of Section 38 (3) of the Act.[26]

Thus, Indian protection to well-known trade marks against prohibition of use on different goods existed in 1940 provided that the criteria of well-known trade mark as required under Section 38 (1) were satisfied. It is also pertinent to mention that the validity of defensive registration of well-known mark was completely co-related to validity of first registration. In the event the original registration lapsed, all defensive registrations would have lapsed.

An interesting aspect which appears on a reading of Section 38 (1) of the Act is that the benefit under that section was only given to marks which had an invented word within them. Thus, a pure logo with no invented word such as the LG Logo[27] (provided below) would not have got a defensive registration.

TRADE MARKS ACT, 1958

The Indian Merchandise Marks Act, 1889 and Trade Marks Act, 1940 were subsequently repealed vide the Trade Marks Act, 1958 (hereinafter also referred as “1958 Act”).[28] This Act further consolidated law relating to trade marks in India. This time, the penal provisions pertaining to violations of trade mark rights were inserted in the 1958 Act itself.[29] Vide Section 135, the penal provisions pertaining to violations of Trade Mark rights provided in the Indian Penal Code were repealed. The 1958 Act made no change to the definition of the word “mark”[30]. However, the Act made changes to the definition of “trade mark”. As per the Act, “trade mark” meant:

“(i) in relation to Chapter X (other than section 81), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark”; and

(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purposes of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII”[31]

The 1958 Act again did not provide for definition of well-known trade mark but the provisions as regards the defensive registrations under Section 38 of the Trade Marks Act, 1940 were retained in Section 47 of the 1958 Act. The 1958 Act, would have to be interpreted pari materia and thus would be concluded to hold the same stance qua the well-known trade marks as under the 1940 Act.

TRADE MARKS ACT, 1999

Agreement on TRIPS is considered as the most important multilateral agreement on Intellectual Property Rights which came into force on 1^st January, 1995. In 1994, India signed the same at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) and became the member of the WTO.[32]The signatory to TRIPS were also bound by certain provisions of the Paris Convention.[33]Subsequently, India signed the instrument of accession to the Paris Convention on 7^th September, 1998 which came into force with respect to India on 7^th December, 1998. To comply with India’s obligations under the TRIPS agreement and Paris Convention, the Trade Marks Act, 1999 and Trade Marks Rules, 2002 were enacted which came into force on 15^th September, 2003 and the 1958 Act was repealed. 

Trade Marks Act, 1999 (hereinafter also referred as “1999 Act”) is currently the statutory governing law on the subject. Under this Act, the concept of defensive trade mark registration was removed. The scope of infringement was extended to similar products/services as well as different products so as not to only include actions based on confusion but also dilution. The Trade Marks Act, 1999 accorded a statutory protection to well known trade marks, irrespective of whether they are Indian marks or foreign marks.[34]

Definitions

The definition of the term “mark” was also expanded so as to additionally include shape of goods, packaging or combination of colours.[35]The definition of “trade mark” was also amended to qualify it as one which can be graphically represented and is used or registered in relation to services as well.[36] The earlier discussed Trade Mark statutes had no provision of recognizing a trade mark for “services” but only goods. The 1999 Act, recognises use and registration of trade mark for both goods and services. The definition of the word “mark” and “trade mark” become relevant to understand that a Well-known trade mark if not restricted otherwise (as earlier by Section 38 (1) in the 1940 Act) can be even “shape of goods” or “colour combination” and that too for goods or services, as may be applicable. This was a drastic change qua the scope of the concept of “trade mark” itself in Indian statutory regime, which naturally spilled over to well-known trade marks. This is also reflective in the definition of “well-known trade mark”.

The Trade Marks Act, 1999 for the first time ever provided for definition of “well-known trade mark”.[37] The same is provided herein below:

“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 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.”

A closer look at the above definition reveals that it takes its colour and words from Section 38 (1) of the Trade Marks Act, 1940 as it uses the words “indicating a connection in the course of trade or rendering of services”. Thus, the test of trade connection amongst different products using a well-known trade mark subsists presently and has been retained since the year 1940.

However, there appears to be two major changes to the way well-known trade marks are sought to be dealt by the 1999 Act as compared to its predecessor Acts. Firstly, in the present Act the mark has to become a well-known trade mark to substantial segment of public, whereas under the earlier acts there was no such qualification. Those acts only required the mark to have become have well-known. Here the qualification of “substantial segment of public” appears to be a higher threshold to achieve than what was required under the old Acts. Otherwise, the legislature would have used the words “sufficient segment of public”.

Secondly, under the predecessor Acts, a well-known trade mark had to be a mark which comprised of an invented word. This restricted the protection accorded to “Well-known trade marks” to marks comprising of words only and that too only invented.

It is also pertinent to add herein that while observing the definition of well-known trade mark in Section 2 (1) (zg), the Hon’ble High Court of Delhi observed that the relevant public under that section is the segment of the public which uses such goods.[38] This fact is also apparent from the language of the said provision. 

Registratability of well-known trade mark

Under the 1999 Act, as there is no restriction that a well-known trade mark should comprise of an invented word, the LG Logo mark provided above can be considered as a well-known trade mark unlike the 1958 Act or 1940 Act.

This aspect can also be seen from a perusal of the proviso to Section 9 (1) of the Trade Marks Act, 1999. Section 9 (1) provides for absolute grounds of refusal of registration of marks. As per the proviso, even a mark which could have been a descriptive mark, which is normally barred from registration under grounds of refusal mentioned in Section 9 (1), can be registered if it is a well-known trade mark. Thus, completely doing away with the requirement that well-known trade mark should comprise an invented word.

Prohibition against registration of marks similar to well-known trade mark

Further, the 1999 Act bars registration as a trade mark of any mark irrespective of the type of goods it is applied for if it is identical to an earlier well-known trade mark and its use without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the well-known trade mark.[39] Thus, the Act of 1999 incorporates the concept of dilution of well-known trade mark at the stage of Opposition proceeding.

Factors for determining a trade mark to be well-known trade mark

The 1999 Act for the first time also provided for factors that should be considered by the Registrar of Trade Marks while determining a mark as a “well-known trade mark under Section 11(6)[40] which are based on and mostly in line with factors mentioned in Article 2 (1) (b) of “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks”. The last factor in the said Article 2 (1) (b) being “value associated with the mark” is not the part of the 1999 Act. It is pertinent to mention that under Section 11 (6) (v), the 1999 Act recognise that both the Court as well as the Registrar have the powers to recognize a mark as well-known trade mark. Section 11 (7)[41] of the 1999 Act is a reflection of Article 2 (2) (a) of the Joint Recommendation.

Similarly, Article 2 (2) (b) of the Joint Recommendation has been incorporated under Section 11 (8) of the Act which states that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

Section 11 (9) of the Act circumscribes the power of Registrar while determining whether the trademark is a well known trademark. Section 11 (9), which is akin to Article 2 (3) (a) of the Joint Recommendation on well-known trade marks, provides for situations which are not be considered as a pre-condition by the Registrar for determining a mark as a well-known trade mark. The same are:

• 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.[42]

Thus, under Section 11 (9) (i) and (v), for the purposes of registration of a well-known mark it is not necessary for such mark to have been used in India or be well-known to the public at large in India. It must be well known to a substantial segment of the relevant public.[43]

In Rolex SA v. Alex Jewellery (P) Ltd.[44] the Hon’ble Court perused the provisions of Section 11 (6) and found the mark “Rolex” to satisfy the test mentioned therein. Subsequently, the Hon’ble High Court of Delhi in Tata Sons Ltd. v. Manoj Dodia[45] observed that the Trade Marks Act, 1999 does not provide for factors to be considered by the Hon’ble Court in determining a mark to be a well-known trade mark but provides for factors which are to be considered by Registrar. In the said case, the Hon’ble Court listed several factors which should be considered by the Hon’ble Court in determining a mark to be a well-known trade mark. The same are:

1. The extent of knowledge of the mark to, and its recognition by the relevant public;
2. the duration of the use of the mark;
3. the extent of the products and services in relation to which the mark is being used;
4. the method, frequency, extent and duration of advertising and promotion of the mark;
5. the geographical extent of the trading area in which the mark is used;
6. the state of registration of the mark;
7. the volume of business of the goods or services sold under that mark;
8. the nature and extent of the use of same or similar mark by other parties;
9. the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of  law and trademark registry; and
10. actual or potential number of persons consuming goods or availing services being sold under that brand.

The Hon’ble Court further observed that a trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction.

The decisions in Rolex SA v. Alex Jewellery (P) Ltd. and Tata Sons Ltd. v. Manoj Dodia were subsequently followed in Ford Motor Company v. C.R. Borman[46].

Exceptions to protection of a well-known trade mark

Section 11 also provides for a situation where a mark, identical or similar to a well-known trade mark has been either registered in good faith or the right to a trade mark has been acquired through use before the commencement of the Trade Marks Act, 1999, i.e. before 15^th September, 2003 when the Act came into force. In such a situation, the owner of well-known trade mark is not entitled to challenge the validity of such a registered mark or seek an action challenging the right to use such a mark.[47]

Passing off and Infringement of well-known trade mark

As far as actions restricting the use of the mark are concerned, the common law of passing off saved by Section 27 (2) of the Trade Marks Act, 1999 protects any wrongful use of a mark identical or deceptively similar to a well-known trade mark whether for similar goods or services or different goods or services. This position has been recognised by the Hon’ble High Court of Delhi in Bloomberg Finance LP v. Prafull Saklecha & Ors.[48]As far as infringement of trade mark is concerned, like an ordinary trade mark a well-known mark would have to be a registered trade mark in India to make out a case of infringement. Similarly, like a regular registered trade mark if the well-known registered trade mark is being used for identical or similar goods then the considerations for infringement under Section 29 (1),[49] (2)[50] and (5)[51] of the Trade Marks Act, 1999 apply equally to registered well-known marks as they apply to other registered trade marks.

The difference in an action for infringement with respect to a regular registered trade mark and a well-known registered trade mark comes to fore in the event of situations falling under Section 29 (4) of the Act. As per the said Section, if a registered trade mark has a reputation in India, the use of the same or use of any mark similar to the same on dissimilar goods or services constitutes infringement, provided such use which use without due cause takes unfair advantage of the registered trade mark or is otherwise detrimental to, the distinctive character or repute of the registered trade mark. This provision is in line with India’s obligation to TRIPS and India’s statutory stand on trade mark dilution. The provision is also the differentiating factor on remedies on prohibition of use between a mere registered mark and a registered well-known mark. Interestingly, the said Section does not use the words “well-known”. This demonstrates that even if a mark is not well-known but has a reputation in India, then also it can be protected from dilution occurring on account of use of the same or something deceptively similar to the same on different goods or services. The Hon’ble High Court of Delhi has observed that in case of Section 29 (4), the Plaintiff has to only satisfy whether the registered trade mark of the Plaintiff has a reputation In India and the and the use of the mark by the defendants is without due cause and takes unfair advantage of and/or is detrimental to the distinctive character or repute of the registered trademark.[52]

Further, one of the common defences put up by Defendants in a case of injunctions based on passing off or infringement of trade mark is that the Plaintiff is not entitled to a relief as the Plaintiff has approached the Hon’ble Court after a considerable time since he had knowledge of the Defendant. It appears that the said defence is not applicable in case of well-known trade marks. The Hon’ble High Court of Delhi has observed the principle of delay, could not, and ought not be applied to well known marks.[53]

TRADE MARKS RULES, 2002

As earlier stated, the Trade Marks Rules, 2002 came into force along with the Trade Marks Act, 2003 on 15^th September, 2003. The said rules dealt with some procedural aspects that are to be considered while opposing a registration of a trade mark application which is identical or similar to a well-known trade mark. As per Rule 48 (b) (iii) a Notice of Opposition based on alleged well-known trade mark has to indicate that the Opposition is based on well-known trade mark within the meaning of Section 11 (2) of the Trade Marks Act, 1999 and also indicate the country or countries in which the mark has been recognised to be well-known. Further, as per Rule 48 (b) (vi), a Notice of Opposition in the event where the goods or services in respect of which well-known mark has been registered or applied for or in respect of which the mark is well known within the meaning of Section 11 (2) of the Trade Marks Act, 1999 or has a reputation within the meaning of that section, shall when indicating all the goods or services for which the mark is protected, also indicate those goods or services on which the Opposition is based.

TRADE MARKS RULES, 2017

Trade Marks Rules, 2017 is the latest and current applicable version of Rules in India on the issue of Trade Marks. The requirements under Rule 48 of the Trade Marks Rules, 2002 have been placed in Rule 43 of Trade Marks Rules, 2017 wherein Rule 43 (1) (b) (iii) is akin to Rule 48 (b) (iii) of the Trade Marks Rules, 2002 and Rule 43 (1) (b) (vi) is akin to Rule 48 (b) (vi).

The Trade Marks Rules, 2017 also additionally provide for the first time in Trade Marks Rules, a rule on determination of trade marks as a well-known trade marks through a separate application in this regard.[54] As per the said Rule any person may, on an application in Form TM-M and after payment of fee of Rs. 1,00,000/-[55], request the Registrar for determination of a trade mark as well-known.

Such an application has to be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.[56] The Registration while determining the trade mark as well-known has to take into account the provisions of Section 11 (6) to (9) of the Trade Marks Act, 1999.[57] It is open for the Registrar to invite objections to such an application from the general public which are required to be filed within thirty days from the date of invitation of such objection.[58]If the application is cleared the trade mark shall be included in the list of well-known trade marks maintained by the Registrar.[59]

If the Registrar finds that a trade mark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trade marks, the Registrar may remove the same from the list after providing due opportunity of hearing to the concerned party.[60]

This provision/rule has slightly triggered the Hon’ble Courts to not rule in some situations on determination of mark as well-known trade mark. In November, 2017, in a decision by the Hon’ble High Court of Delhi wherein the Plaintiff sought a declaration that the trade mark “Samsung” and its oval device be declared as well-known trade marks, the Hon’ble  High Court of Delhi has held that the appropriate course for the Plaintiff to ascertain the status of its mark  as a well-known mark is that the Plaintiff should take recourse of the procedure prescribed under Rule 124 of the Trade Marks Rules, 2017 and file a requisite application before the Registrar.[61]

The Hon’ble Court also observed that:

“This Court is also of the view that since the defendants have not contested the present suit by leading evidence, the plaintiffs cannot circumvent the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 with respect to determination of a trade mark as a well known mark. Had the Defendants formally contested the Plaintiff’s contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of the plaintiffs claim that the mark SAMSUNG is well known.”

Further, recently, in October, 2018 in another decision by the Hon’ble High Court of Delhi wherein the Plaintiff sought a declaration that the trade mark “Mont Blanc” be declared as a well-known trade mark, the Hon’ble Court was of the view that the procedure prescribed in Rule 124 needs to be availed of by the parties who claim the status of a well-known mark and did not ruled on the prayer of declaration.[62]

In the subsequent decision pertaining to the mark “Mont Blanc”, the Hon’ble Court does not give any reasons as to why it does not rule on the prayer of declaration of trade mark as a well-known trade mark. Considering that both the above mentioned decisions are from the same single judge, the reasoning given in the Samsung decision (supra), that Defendants have not contested the suit, appears to be the reasoning of not ruling on the aspect of a well-known trade mark. The Hon’ble Court has not held that the Hon’ble Court or Courts will not determined as to whether a mark is a well-known trade mark but has observed that the same will be done only in contested matters.

With great respect, the reasoning does not appear to be sound. The reason for this is that in an ex-parte matter (where Defendant chooses not to appear after service of Summons of appearance) the Plaintiff has filed a suit and the Defendant has chosen not to appear. The Plaintiff leads its ex-parte evidence as per law for the purposes of infringement and passing off. Plaintiff demonstrates, though ex-parte, that the mark has goodwill. In such a situation, the Hon’ble Court should rule upon whether the mark is a well-known trade mark or not irrespective of the contest posed by the Defendant. The threshold of such an inquiry should be high and the evidence should be scrutinized with a fine tooth comb but the Hon’ble Court shoud opine on the well-known status of the mark in all matters wherein enforcement of rights in the mark has been sought for. This is clear from a reading of Section 11 (6)(v) and 11 (8) of the Trade Marks Act, 1999.

Further, even the procedure prescribed under Rule 124 is more or less ex-parte. An applicant has to move before the Registrar of Trade Marks and if the Registrar feels a need, he or she may invite the objections on the application. If the Registrar is satisfied otherwise, the whole procedure is ex-parte. Even if the Registrar invites objections and no one files an objection, then also the procedure is ex-parte. Therefore, the reasoning of an uncontestable claim appears to be incorrect.

It is stated that the Hon’ble Court used the words “circumvent” in the Samsung decision (supra).[63] It is stated that a ruling by the Hon’ble Court is merely a factor for determining a mark as a well-known trade mark. It is not the only factor. This is clear from a reading of Section 11 (6) of the Trade Marks Act, 1999 or the understanding of Joint Recommendation on well-known trade marks discussed above. Even if the Hon’ble Court holds a mark to be well-known, an entity after enactment of Trade Marks Rules, 2017 would still have to move under Rule 124 and the mark has to be judged on all parameters, whatever applicable, from Section 11 (6) to 11 (9).

The practice before the enactment of Trade Marks Rules, 2017 was that either Court, Intellectual Property Appellate Board or the Registrar of Trade Marks opined upon whether a trade mark is a well-known trade mark in either an infringement proceeding, rectification proceeding or an opposition proceeding.[64]

After determination, the declared well-known trade mark was entered into the list of well-known marks maintained by the Trade Marks office. As of 14^th March 2017, the time when the Trade Marks Rules, 2017 were enacted, the list of declared well-known trademarks in the official database had eighty one entries.[65] At that time only four of the eighty one marks had been declared well-known by the Registrar of Trade Marks while deciding proceedings before him.[66] Currently, post the Trade Marks Rules, 2017 there are ninety seven trade marks on the list.[67] Out of the additional sixteen marks, thirteen have been determined to be well-known by the Registrar of Trade Marks. Thus, it can be seen that Rule 124 is being invoked to a considerable extent.

It is further stated that Rule 124 also helps proprietors in those cases where there is no adversarial contest to a mark. The mark may not have been a subject of infringement, passing off, opposition or rectification and can still be declared a well-known mark under Rule 124 which will aid in better protection of the mark subsequently in future. This opens door for declaration of multiple marks as well-known trade marks without there being a contest involving enforcement of rights. This will ensure strengthening of Intellectual Property, its effective enforcement, competition and public interest qua well-known marks. It in turns also generates economic revenue for government through mandated fees and resultant better protection which leads to higher sales of the well-known brand in turn leading to more revenue.  

Conclusion

On a perusal of the above, we see that the concept of well-known trade marks and its protection has been a subject matter of a lot of change in certain aspects, whereas certain aspects have not changed at all. From its humble recognition in the Paris Convention to the present day, not only it applies to services but also to different goods. It can be easily said that Agreement on Trade Related Aspects of Intellectual Property Rights was instrumental in expanding the concept not only to goods but to services and furthermore to services or goods different from what are sold or provided by the owner of well-known trade marks. Further, we see that a necessary effect on the protection of well-known trade marks has happened on account of development and expansion of definitions of “mark” and “trade mark”. From earlier being recognised only for marks comprising invented words in 1940 Act and 1958 Act, currently a colour combination per se or even a purely descriptive mark can be recognised as a well-known trade mark. This demonstrates how far the law has come in respect of well-known trade marks which are considered aspirational.

However, it cannot be said that some aspects have not remained static. The present definition of well-known trade mark under Section 2 (1) (zg) of the Trade Marks Act, 1999 is still premised on the characteristic of confusion as to trade connection contemplated = in Section 38 of the Trade Marks Act, 1940.

The insertion of provisions such as Sections 11 (6) to (9) demonstrates India’s obligation to the TRIPS and India’s position vis-à-vis the Joint Recommendation on well-known marks. It is very clear that for determination of a mark as a well-known trade mark its use in India is not a pre-condition but reading together the view of Hon’ble High Court in Tata Sons Ltd. v. Manoj Dodia[68]and Section 11 (6) (i), one should still while determining a mark to be a well-known trade mark in India should consider the reputation of the mark in India which could be because of result of promotion of the mark.

In India, what comes across as problematic is the manner in which the Hon’ble High Court of Delhi has dealt with the issue of determination of a mark as a well-known mark post enactment of Rule 124 of Trade Marks Rules, 2017. As earlier stated, the Hon’ble Courts should determine whether a mark is a well-known trade mark or not when an appropriate request in this regard is made or is necessary. The Hon’ble Court should not restrict upon the said inquiry just because there is no contest by the Defendant. The Hon’ble Court should also look at it from another angle. If the Plaintiff is seeking an order for determination of a mark as a well-known trade mark, that Plaintiff is seeking a finding on a right. That right may be recognised by the Hon’ble Court or may be denied. Thus, it would be the Plaintiff who would suffer if the mark is held by the Hon’ble Court not to be a well-known mark and a Plaintiff is taking that risk keeping in mind the consequences.

In any event, Rule 124 is a welcome insertion as it provides an opportunity to all owners of marks to seek a determination of their mark as a well-known trade mark without having to go through a contested proceeding such as Opposition, Rectification, Infringement or Passing off.

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[1] Ankit Rastogi, “Development of law on registrability and protectability of unconventional trade marks such as shape, sound, smell, colour and taste in India, United States of America and European Union”, available at: https://indiancaselaws.wordpress.com/2020/05/09/development-of-law-on-registrability-and-protectability-of-unconventional-trade-marks-such-as-shape-sound-smell-colour-and-taste-in-india-united-states-of-america-and-european-union/ (last visited on June 5, 2020)

[2] Koninlikje Philips Electronics Ltd. v. Remington Consumers Products Ltd., C-299/99

[3] Bloomberg Finance LP v. Prafull Saklecha, 2013 (56) PTC 243 (Del)

[4] Adidas Solomon and Adidas Benelux, (2003) ECR-I-2357)

[5] Rolex SA v. Alex Jewellery (P) Ltd., 2009 (41) PTC 284 (Del.)

[6] 1994 PTC 287

[7] Ibid.

[8] Image available at: https://indiancaselaws.wordpress.com/2014/06/26/daimler-benz-aktiegesellschaft-anr-v-hybo-hindustan/#:~:text=Hybo%20Hindustan,-June%2026%2C%202014&text=The%20Plaintiffs%20being%20a%20famous,pointed%20human%20being%20on%20undergarments. (last visited on June 7, 2020)

[9] Paris Convention for the Protection of Industrial Property, 1883. art. 6bis

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known 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. These provisions shall also apply when the essential part of the mark constitutes a reproduction ofany such well–known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

[10] Archi Bhatia, “Well known trademark and Indian law”, available at: https://yourstory.com/mystory/06f45cdb1b-well-known-trademark-a#:~:text=Well%2D%20known%20trademark%20originates%20from,that%20of%20an%20ordinary%20trademark. (last visited on June 5, 2020)

[11] Seth M. Reiss, “Commentary on the Paris Convention for the Protection of Industrial Property”, available at: http://www.lex-ip.com/Paris.pdf (last visited on June 5, 2020)

[12] McDonald’s Corporation vs. Joburgers Drive-Inn Restaurant (PTY), Supreme Court of South Africa, Case No. 547/95, 1996.

[13] Trade Related Aspects of Intellectual Property Rights, 1995, art. 16. 2 –

2. Article 6^bis 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.

3. Article 6^bis 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.

[14] Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del.)

[15] “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks”, available at: https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf (last visited on June 5, 2020)

[16] Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, art. 2 (1) (b)

[17] Id. at art. 2 (1) (c)

[18] Id. at art. 2 (2) (a) at 7

[19] Id.at art. 2 (3) (a)

[20] Dr. Sudhir Ravindran (ed.), Saravanan A and Filma V, “First amongst equals: review of the historical perspectives of the trademark legislation and registration”, available at: https://www.altacit.com/publication/first-amongst-equals-review-of-the-historical-perspectives-of-the-trademark-legislation-and-registration/ (last visited on June 6, 2020)

[21] Indian Merchandise Marks Act, 1889, s. 2 (1)

[22] Saravanan A, Filma V, Edited by Dr. Sudhir Ravindran, “First amongst equals: review of the historical perspectives of the trademark legislation and registration”, available at: https://www.altacit.com/publication/first-amongst-equals-review-of-the-historical-perspectives-of-the-trademark-legislation-and-registration/ (last visited on June 5, 2020)

[23] Trade Marks Act, 1940, s. 2 (1) (f)

[24] Id. at s. 2 (1) (l)

[25] Id. at s. 21

[26] Id. at s. 38 (3) – A trade mark registered as a defensive trade mark and the trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered associated trade marks.

[27] Image available at: https://www.indiatvnews.com/buzz/news-5-famous-logos-and-their-hidden-meanings-that-will-shock-you-439071 (last visited on June 5, 2020)

[28] Trade Marks Act, 1958, S. 136

[29] Id. at Ch. X (s. 76 to 95)

[30] Id. at s. 2 (1)(j)

[31] Id. at s. 2 (1) (v)

[32] Mahesh D Pawar, “10 years after TRIPS obligations in India” available at: https://www.future science.com/doi/abs/10.4155/ppa.15.12?journalCode=ppa#:~:text=In%201994%2C%20India%20signed%20the,Act%20was%20amended%20in%202005. (last visited on June 6, 2020)

[33] Agreement on Trade Related Aspects of Intellectual Property Rights, 1994, art. 2.1

[34] Supra note 14

[35] Trade Marks Act, 1999, s. 2 (1) (m)

[36] Id. at s. 2 (1) (zb)

[37] Id. at s. 2 (1) (zg)

[38] Supra note 5

[39] Supra note 35 at s. 11 (2)

[40] Id. at s. 11 (6) – The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

[41] (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

[42] Supra note 35 at s. 11 (9)

[43] Supra note 3

[44] Supra note 5

[45] Supra note 14

[46]  2014 (59) PTC 132 (Del.)

[47] Supra note 35 at s. 11 (11)

[48] Supra note 3

[49] Supra note 35 at s. 29 (1) – Infringement of registered trade marks.— (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

[50] Id. at 35 at s. 29 (2) – Infringement of registered trade marks — A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

[51] Id. at 35 at s. 29 (5) – Infringement of registered trade marks – A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

[52] Supra note 5

[53] Supra note 6

[54] Trade Marks Rules, 2017, r. 124

[55] Id. at Schedule I, Entry 18

[56] Id. at r. 124 (1)

[57] Id. at r. 124 (2)

[58] Id. at r. 124 (4)

[59] Id. at r. 124 (5)

[60] Id. at r. 124 (6)

[61] Samsung Electronics Company Ltd. v. D.R. Radio Corporation, 2018 (73) PTC 170 (Del)

[62] Montblanc-Simplo GMBH v. Bajaj Belts, 2018 (76) PTC 390(Del)

[63] Supra note 61

[64] Prashant Reddy, available at: https://spicyip.com/2017/04/the-well-known-trademark-under-the-new-trade-mark-rules-2017-is-the-new-procedure-constitutional.html (last visited on June 7, 2020)

[65] Bharat Prasad, available at: “The Changing Perspective of Well-Known Trademarks In India” available at: https://www.ip-watch.org/2017/03/22/changing-perspective-well-known-trademarks-india/ (last visited on June 5, 2020)

[66] Ibid.

[67] “List of Well Known Trade marks (updated)”, available at: https://ipindiaonline.gov.in/tmrpublicsearch/well-known-trademaks-updated.pdf (last visited on June 7, 2020)

[68] Supra note 14