Recognition and Protection of Well-known Trademark Globally

Discover how well-known trademarks gain global recognition and protection through frameworks like the Paris Convention and TRIPS Agreement, address cross-border enforcement, jurisdictional challenges, and harmonization of trademark laws.

Protection of well-known trademark – Being recognized as a well-known mark, either by a court or the Trademark Registry, constitutes one of the rarest and most robust forms of protection afforded to any trademark under the Trade Marks Act, 1999. This recognition carries numerous benefits, the most significant being the ability to restrain the registration and use of any identical or deceptively similar mark across various categories or classes of goods and services.

For instance, in a notable case (AIR 1988 BOM-167), the use of the mark “BAJAJ” for steel containers and utensils was restrained. This decision was based on the grounds that the mark “BAJAJ,” which had been established as a well-known mark for electrical goods and electronic devices/appliances, had transcended its original category of goods and services.

Prior to the Trade Mark Rules 2017, the designation of a mark as “well-known” was typically granted through orders issued by Courts, the Registrar, or the Intellectual Property Appellate Board (IPAB), which is now abolished, in infringement, opposition, or rectification proceedings.

However, with the introduction of the Trade Mark Rules 2017, applicants are now empowered to proactively seek registration of their mark as a “well-known” mark. This signifies a significant shift, allowing trademark owners to assert their mark’s well-known status more efficiently and effectively through formal application processes, rather than solely relying on litigation outcomes.

Background of Protection of Well-known Trademark

The concept of a “well-known trademark” first emerged within the framework of the Paris Convention through its Hague Amendment in 1925. Initially, the convention primarily focused on refusal or denial of registration for trademarks conflicting with well-known ones operating within a country. However, the term itself was not explicitly defined, with the convention offering criteria to identify such marks instead. Subsequent revisions in 1934 and 1958, known as the London and Lisbon Revisions respectively, strengthened protection of well-known trademark. Attributes like uninterrupted use and acclaimed goodwill gained significance, binding signatory States to intervene only to safeguard well-known trademarks against unauthorized use on identical or similar goods.

A parallel approach is evident in the Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) of 1994, albeit with expanded protections extending to services. Additionally, TRIPS introduced additional criteria such as recognition among relevant sections of the public, deviating from the notion that a well-known mark must be known to the public at large. Moreover, TRIPS broadened the scope of protection by allowing invocation of well-known trademark rights even when goods and services are dissimilar, provided there’s a connection with the owner and the owner’s interests are compromised, thus eliminating the principle of speciality.

In 1999, joint recommendations concerning well-known trademarks were adopted by the assembly of the Paris Union and the World Intellectual Property Organization (WIPO). Notably, this document, while providing for the protection of well-known trademark, omitted a precise definition, instead focusing on safeguarding their usage when threatened.

Well-Known Trademarks: Indian Context

In India, the Trademarks Act of 1999 offers a comprehensive definition of a ‘well-known trademark’ under Section 2(1)(zg). According to this provision, a well-known trademark is characterized by its recognition among a substantial segment of the public that uses the associated goods or services. Such recognition is to the extent that the use of the mark in relation to other goods or services would likely imply a connection between those goods or services and the owner of the well-known mark.

This definition underscores the exceptional protection of well-known trademark, transcending limitations to specific categories of goods or services.

Scope Under the Trade Marks Act, 1999:

Key provisions within the Trademarks Act, 1999 further elucidate the recognition and protection of well-known trademark:

1. Section 11(2): Recognizes one of the relative grounds for refusal of trademark registration, stipulating that a mark shall not be registered if it conflicts with an earlier well-known trademark in India.
2. Section 11(6): Sets forth criteria for determining a well-known mark, encompassing factors such as:

• Knowledge or recognition of the mark among the relevant section of the public, including promotion-driven awareness within India.
• Duration, extent, and geographical area of mark usage.
• Duration and extent of promotional activities like advertising, publicity, and participation in fairs or exhibitions.
• Record of successful enforcement of trademark rights, including recognition as a well-known mark by courts or the Registrar.

3. Section 11(9): Specifies conditions and factors considered for granting well-known trademark status, including:

• Registration of the trademark in India.
• Public awareness of the trademark.
• Usage of the trademark within India.
• Ongoing application for trademark registration in India.
• Registration of the trademark in any other jurisdiction.

4. Section 11(10): Imposes an obligation on the Registrar of Trademarks to safeguard well-known trademarks against identical or similar marks.

These provisions collectively establish a robust framework for the identification, recognition, and protection of well-known trademark in India.

Procedure to File for a Well-Known Trademark

The process for filing a well-known trademark application in India is governed by Rule 124 of the Trademark Rules of 2017. Below is a detailed outline of the steps involved in this procedure:

1. Submission of Application: 

• File an application using Form TM-M, which initiates the process for the recognition of a well-known trademark.
• Submit the form via E-filing only, accompanied by a fee of Rs. 1,00,000.

2. Documentation:

• Provide documentary evidence, including a Statement of Case and evidence supporting the applicant’s rights.
• Essential documents to include:
• Evidence demonstrating the use of the trademark in India and/or abroad.
• Copies of any domestic or international trademark registrations.
• Awards and recognitions received by the mark.
• Annual sales turnover worldwide, including India, related to goods or services under the mark.
• Annual promotional and advertising expenses worldwide, including India.
• Information on the number of actual or potential customers.
• Promotional and advertising materials.
• Details of enforcement actions taken and any related court orders.
• Any previous orders recognizing the mark as well-known.

3. Submission Format:

• All documentary evidence must be compiled into a single PDF file, with a maximum size of 10 MB.

4. Document Scrutiny:

• The Trade Mark Registry scrutinizes the documents submitted with the application.

5. Examination and Publication:

• The application undergoes examination and publication by the Registrar.

6. Additional Document Request:

• The Registrar may request further documents deemed necessary for examination or determination.

7. Handling Objections:

• Any objections raised to the mark are addressed by the applicant.

8. Inviting Public Objections:

• The Registrar may invite objections from the general public, allowing a 30-day period for objections to be filed.

9. Publication of Well-Known Mark:

• Upon approval and declaration as a “well-known” mark by the Registrar, the mark is published in the list of well-known marks maintained by the Trademark Registry, accessible online.

10. Review and Removal:

• The Registrar retains the authority to remove a mark from the list if it is found to have been erroneously or inadvertently declared as a well-known mark, even after registration.

11. Appeal Process:

• If dissatisfied with the Registrar’s decision, an appeal can be filed before the High Court (previously IPAB) within three months from the date of the decision.

Judicial Precedent on Well-Known Trademarks

Legal Precedents Demonstrating Recognition of Well-Known Trademarks

Several landmark legal cases illustrate the recognition and protection of well-known trademark under Indian trademark law:

1. Kamal Trading Corporation & Ors vs. Gillette UK Ltd., England [1998 PTC 288 DB]:

• The Bombay High Court restrained the defendant from using the plaintiff’s ‘7 O’CLOCK’ mark for toothbrushes, acknowledging the transborder reputation of the plaintiff’s mark. The court emphasized that trading in India is not mandatory to establish goodwill and reputation.

2. Daimler Benz Aktiegesellschaft vs. Hybo Hindustan [1994 PTC 287]:

• The Delhi High Court acknowledged the well-known character of Mercedes Benz and restrained the defendant from using the mark ‘Benz’ for undergarments, stating that it would be “perverse” to use such a revered mark for dissimilar goods.

3. N.R Dongre vs. Whirlpool Corporation [1996 5 SCC 714]:

• The court recognized the goodwill and reputation of the mark ‘Whirlpool,’ despite the absence of business operations in India. The extensive international advertising of the brand had an incidental impact within the country.

4. Rolex Sa vs. Alex Jewellery Pvt. Ltd. [2009 (41) PTC 284 (Del.)]:

• The Delhi High Court restrained the defendants from using the mark ‘Rolex’ for artificial jewelry, considering the plaintiff’s status as a premium watch company. The court noted that consumers might assume the jewelry was an extension of the plaintiff’s business.

5. Tata Sons Ltd. vs. Manoj Dodia, [CS(OS) No. 264/2008 and CS(OS) No. 232/2009]:

• The court laid down a 10-factor test to determine the well-known status of a trademark. Factors included the extent of public knowledge, duration of use, advertising frequency, geographical trading area, volume of goods sold, registration status, enforcement history, and consumer base.

These cases highlight the courts’ recognition of the significance of well-known trademarks and their commitment to protecting them from unauthorised use, even in cases where the business may not operate directly within India.

Concluding Remarks:

In conclusion, the recognition and protection of well-known trademarks globally are paramount in safeguarding intellectual property rights and fostering innovation and consumer trust. Through the comprehensive services offered by Vakilsearch, businesses can navigate the complex landscape of trademark registration and enforcement with ease and confidence.

By leveraging Vakilsearch’s expertise in trademark law and registration processes, businesses can establish and protect their brands on a global scale. From conducting trademark searches to filing applications and enforcing trademark rights, Vakilsearch provides tailored solutions to meet the diverse needs of clients across industries.

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