Introduction

In today’s marketplace, where every single person/ juristic entity is striving to build a brand for themselves, a tag of a well-known trademark attached to its brand is considered to be a holy grail for trademark owners. Not only does well-known trademark bring a substantial commercial value for trademark owners but it also provides a sturdy protective shell for them to seek refuge in. Trademarks are signs which distinguish the goods and services of one enterprise from another. Trademarks provide a self-attraction feature, which contributes to the monetary arena of an enterprise. In extension to this well-known trademark, play a much more important role here. The limiting feature for a trademark protection is that it is confined to a prescribed territory where the protection is obtained. However, in times like these where consumers transcend the borders and social media blurs the distance between countries, well-known trademark offers a global recognition and protection to an enterprise. This article would dive into the various nuances of well-known trademarks and seek to understand the benefits and protection it offers in today’s constantly developing marketplace.

International framework for well-known trademark protection

The importance of well-known trademarks and the need to protect them was first addressed in the Paris convention in 1920s whereby the provision of Article 6^bis was first incorporated. The content of the provision can be summarized as under:

• Under this provision there is no requirement for registration with respect to well-known trademarks in the country where protection is given under Article 6^bis, as long as a trademark is recognized as well-known in that particular country.
• Protection shall be granted against those goods where a trademark used is identical or similar to a well-known trademark.
• The protection has been provided to similar marks that derive their essential parts from a well-known trademark or are ‘an imitation liable to create confusion’. Any such trademark shall be refused, have its registration cancelled or its use by unauthorized third parties can be prohibited.
• Under this provision, the concept of well known trademarks was related to trademark protection of products only and not services.

The limited scope of protection provided by the Paris convention was supplemented with Article 16(2) and 16(3) of the TRIPS agreement. The incorporation of Article 16 enhanced the scope of protection for well – known trademarks in three ways:

• By extending the scope of well-known trademark protection to services.
• Making the determination of well-known trademarks more flexible by taking the relevant sectors of the public and real-life market conditions into consideration.
• Expanding the scope of protection by considering cases of dissimilar goods or services where the trademark has a connection between the product and the owner of the infringing trademark and use by the third party would cause damage to the owner of well-known trademark.           

Post the incorporation of Article 16, WIPO came under an obligation to protect all well-known trademarks. This led to joint recommendations from WIPO and Paris Convention Union. The guidelines provided in this join recommendations sets a non-exhaustive list of factors that an authority must take into consideration when deciding whether a mark is to be considered well-known or not. The joint recommendations enlarge the scope of protection of well-known trademarks by incorporating Article 2. Article 2 of the joint recommendation clearly states that a well-known mark in a Member State can be protected as a well-known mark if it is well-known in another Member State and the fact is known to the relevant Member State even if the relevant well-known mark has not been used or registered or an application for registration of the mark has not been filed in the Member State concerned.

Well-known trademarks in Indian jurisprudence

India has been protecting well-known trademarks for quite some time. The statutory provisions dealing with protection of trademarks date back to 1860s. During that time, trademarks were protected under the Indian Penal Code, 1860. Subsequently, the Indian Merchandise Marks Act, 1889 defined ‘trademarks’ with reference to the Indian Penal Code. It was in the Trademarks Act, 1940 where the term ‘trademark’ was specifically defined. Even when the 1940 Act does not specifically define well – known marks, it contained provisions which accord special protection to well-known marks if they satisfy the criteria laid down in Section 38 (1). Since India is a signatory to the Paris convention, TRIPS and GATT, it was in compliance with the agreement in TRIPS and the Paris convention that the Trademarks Act, 1999 and Trademarks Rules, 2002 were promulgated repealing the earlier laws on trademarks. It was in the 1999 Act that a statutory definition governing ‘well – known’ marks was laid down.

The Trademarks Act, 1999 defines well-known trademarks in Section 2(1) (zg) as “in relation to any goods or services, 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 act also detail the factors in Sections 11(6), 11(7) and 11(9), which should be considered while deciding which trademark should be given the status of well-known trademark. The wording of the text suggest that the Registry has a final say on which trademark should fall within the ambit of well-known trademark, however, the Courts have also from time to time declared a trademark a well-known trademark when suit for passing off or infringement is presented before them. Section 11(6) lays down five factors that may be considered while determining a well-known mark. The section is reproduced as under:

(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.

Section 11(7) of the Act then further elaborates on the meaning behind ‘relevant section’ of the public by providing three factors. The section is reproduced for ready reference as under:

(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.

As mentioned above, market places now a days transcend the borders and trademarks spill over into the markets of other countries. This is known as doctrine of transborder reputation. The Trademark Act, 1999 recognizes this via Section 11(9).  Section 11 (9) of the Act, in line with Article 2 (3) (a) of the Joint Recommendations, provide for certain instances which need not be considered as pre – requisites while determining a well-known mark, which have been reproduced as under:

(9) 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:— 

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

 (iii) that the application for registration of the trade mark has been filed in India;

 (iv) that the trade mark—

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.

New Trademark Rules, 2017 and the registration process of well-known trademarks in India.

Before the new trademark rules came into place, the Registry made a list of well-known trademarks and uploaded it on the website. However, with the new rules, a trademark owner can directly file an application for a well-known trademark to the registrar. The steps to be followed for filing for an application for a well-known trademark are as under:

Form TM – M- : For getting mark registered as well- known trademark one needs to file an application on the form TM-M. The prescribed fee as per the first schedule of the rules in Form TM- M is Rs. 1,00,000/-. The Application need to be filed online through the e-filing services of the trademark made available at official website i.e. www.ipindia.nic.in.

There are certain documents which need to be filed along with the form. The documents are listed below:

• Statement of case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark,
• Evidence in support of the applicant’srights and claim viz. evidence as to use of trademark, any application for registration made or registration obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred therefore, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad.
• Details of successful enforcement of rights, if any, relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks,
• Copy of the Judgment of any court in India or Registrar of Trademarks, if any, wherein the trademark is determined as well-known trademark.

The size of the document submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.

After the submission of the form, the office will consider whether to grant the status of well-known trademark or not on the basis of the documents submitted. It may or may not be considered by the Registry. If accepted, then the said mark will be added in the list of Well- Known Trademarks.

If one objects for inclusion of a particular Trademark in the list of Well- Known Trademarks then the applicant can file objection to the Registry of Trademark by stating its reasons for objection.

Copy of such objection will be given to the Applicant and they can file counter statement for such objections within stipulated time. After seeing both the side of the parties the final decisions will be given. If the Applicant’s mark is included in the list of well- known trademark the same shall be informed to the Applicant. This fact shall also be informed to the Trade mark Journal and the mark shall be included in the list of well- known Trademark which would also be available on the website.

Judicial trends of Well-known trademarks in India

The protection and safeguards regarding well-known trademark instilled in the Indian statute i.e. the Trademarks Act, 1999 can be seen via various pronouncements by the Indian Courts. Some of the important judicial pronouncements have been mentioned henceforth. First and foremost is the famous case of Rolex SA v. Alex Jewellery Pvt. Ltd. Ors, 2009 (6) Raj 489 (Del.), where the Plaintiff had approached the Hon’ble Delhi High Court seeking interim relief to restrain the Defendants from dealing in artificial jewellery or in any other product bearing the trademark/ tradename ROLEX or any deception variation thereof. The Hon’ble Court was of the view that bearing in mind the factors laid out in Section 11(6) of the Trademarks Act, 1999, the duration, extent and geographical area of trademark was in the favour of the Plaintiff. The Court further observed that

“The test of a well-known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows of ROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs/demands of consumers in different countries, the well-known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff.”

In the matter of Kamal Trading Co. v. Gillette UK Limited, 1998 IPLR 135, the Plaintiff sought an injunction against the Defendant for the use of the mark ‘7’O Clock’ on their tooth brushes. The Court was of the opinion that the use of the mark ‘7 O’CLOCK’ by the Defendants would clearly result in deceiving the customers with the impression that the toothbrushes come from the house of Gillette, who use the mark on their razors and shaving cream across the world.

In the celebrated case of Whirlpool co. & Anr. V. NR Dongre, (1996) 5 SCC 714, the Plaintiff’s trademark ‘WHIRLPOOL’ expired in 1977 on account of failure to apply for renewal. Later in the year 1988, the Defendant no. 5, Usha International Ltd ,who was trying to ride on the goodwill of WHIRLPOOL, applied with the Registrar of Trademarks for registration of the trademark ‘WHIRLPOOL’ for certain goods including washing machines. Subsequently, the Plaintiff filed an objection which was dismissed by the Registrar on the basis of lack of reputation and non-usage of the trademark ‘WHIRLPOOL’ in India. It was further said that the usage of the trademark ‘WHIRLPOOL’ by N.R Dongre for selling his goods via Usha International Ltd would not create any confusion in the market. Thereafter, the Plaintiff herein filed an action for passing off and grant of an interlocutory injunction. While granting an injunction to Whirlpool corporation the Hon’ble Court observed that Whirlpool Corporation was the prior user of the trademark since 1937 and is registered in 65 countries where they have continuously been in business. Their brand is frequently advertised in international magazines and therefore has acquired transborder reputation and goodwill throughout the world. People across the world associate washing machines and other electronic goods with the brand. Therefore, if the Defendant is allowed to use this brand to sell their products, the customers might get deceived or confused as to the origin of the goods. This would lead to the Plaintiff to suffer an irreparable injury as the products of the Defendant and the Plaintiff differed in their make and quality of performance.

Similar observation were also made in the case of Aktiebolaget Volvo v. Volvo Steels Limited, 1998 (18) PTC 47 (Bom) where the Court ruled in the favour of the Plaintiff and held that the brand VOLVO has an established reputation in India and thus observed that:

“The Defendants…are hereby restrained from using the Plaintiffs’ name/trademark ‘VOLVO and/or any name/mark confusingly or deceptively similar thereto, in relation to online booking of bus tickets, live tracking of buses, telephonic booking of bus tickets or in relation to any other goods or services, in any manner, including…domain name…meta- tags associated with the impugned domain name, as a part of the email id…third party listings, references in social media and/or any representation made by the Defendants…amounting to infringement…and passing off…”

Dilution of Trademarks

Before the provision regarding well-known trademark was incorporated in the Trademarks Act, 1999, there was  no concept of dilution of trademarks. With the incorporation of these provisions, a well-known trademark holder can restrict others from using his mark in a way that would harm the reputation of its brand by reducing his individuality. A trademark is diluted when the use of similar or identical trademarks in other non-competing markets blurs the distinction between the two trademarks. Protection against such dilution essentially means to protect the well-known trademark from losing its singular association in the public mind with a particular product. For instance, the word PEPSI is associated with a globally recognized soda beverage. Hence, any product which is then sold under the name PEPSI would deceive or confuse the customers as they would assume that the said product is by the company PEPSI itself, which might harm the reputation of the brand. To avoid such dilution to take place, the Trademarks Act, 1999 incorporated Section 29(4) which is reproduced as under:

“29 (4) 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— 

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”

So effectively, this means that a well known trademark will transcend the classes of goods/services as provided in Schedule Four appended to the Trademarks Act, 1999. Eg. X`s logo and wordmark brand is registered under class 10 has become a well-known trademark. Y brand after getting itself registered under class 21 uses an identical logo and wordmark as that of X but for products under class 10. In this case, the courts will pass orders in favour of X and injunct Y from infringing the brand of X even though both X and Y operate in complete different spheres of business.

The dilution of trademarks principle was applied in the landmark case of Daimler Benz Aktiegesellschaft v. Hybo Hindustans, AIR 96 Del 239 where the use of the Plaintiff brand name BENZ was being used by the Defendant on undergarments. Applying the rationale of doctrine of dilution of trademark the Court in deciding the case acknowledged the logo of the Plaintiff as a well-known trademark and hence restrained the Defendant from using the impugned mark by stating that there was no valid reason as to why the Defendant would adopt the name “BENZ”, which is associated with one of the finest engineered cars in the world and has a trans-border reputation and goodwill for sale of undergarments.

To strike a balance between genuine claims and frivolous litigations, the Courts have laid down exceptions to the dilution of trademark principle , which are as follows.

• Any Rightful use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famed mark by another individual other than as a designation of course for the person’s own goods and services.
• Promotion or advertisement that allows consumers to compare goods and services.
• All forms of news reporting and news commentary.
• Any mark which includes parodies, criticism or comments.

The parodies principle was used in the case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, where the Defendant, who was the manufacturer of apparels for dogs, sold his product under the mark ‘Chewy Vuitton’. The Courts in the case held that this mark was clearly a parody of the famous brand ‘Louis Vuitton’ and did not dilute the trademark in any way. The consumers would not be deceived or confused between the two brand names.

Conclusion

At present there are 81 registered well-known trademarks in India. With the amendment in Trademark Rules, 2017, and the increased awareness in the marketplace regarding the benefits of well-known trademarks, this article sought to shed light on the nuances of the well-known trademarks. Dipping into the waters of well-known trademarks, one enters into a very niche arena of trademark litigation, therefore understanding the various provisions laid down by the legislature is of utmost necessity. In today’s evolving and developing marketplace it will be a boon to the trademark owners in India to follow the detailed procedure laid down in Trademark Rules, 2017 and get their marks registered as well-known trademarks. This would undoubtably provide security from being infringed or passed off by any unauthorized person. That being said, the Registry would have a heavier burden and would have to be cautious in granting the status of well-known trademark as frivolously granting such status might lead to monopoly in the marketplace and might preclude other parties from using even a similar trademark in respect of other goods and services.