Scroll Top

UNDERSTANDING THE LAW OF WELL-KNOWN TRADEMARKS IN INDIA

As we all know brands are important they are omnipresent today. Brands have value for consumers because we prefer different brands. A trademark is an intellectual property used as an indicator by an individual business organisation

UNDERSTANDING THE LAW OF WELL-KNOWN TRADEMARKS IN INDIA
1
By JusCorpus Blogs September 6, 2024

INTRODUCTION

As we all know brands are important they are omnipresent today. Brands have value for consumers because we prefer different brands. A trademark is an intellectual property used as an indicator by an individual business organisation or other companies to make consumers identify their goods or services. It can be a word name phrase logo symbol design image or a combination of this #. The trademark law was mainly designed to protect the interest of the consumers and from being confused with deceptively similar or identical trademarks. The laws of IPR and its enforcement are the same for all trademarks equally but this is only partly true because we have a concept of well-known marks in India which enjoy a little extra privilege over regular registered trademarks when it comes to the enforcement of IPR rights. How exactly we will be discussing it in this blog at length?

WHAT IS A WELL-KNOWN TRADEMARK?

The term “well-known trademark” is defined under section 2(z) (g) of the Act[1]. It states that a well-known trademark is a mark that has gained enough reputation for representing the goods or services of a brand or a company among the public.

A well-known Trademark is a mark that is widely recognized by the general public and is associated with a popular company or brand. These trademarks are famous and enjoy extra protection under the Trademarks Act as compared to regular registered trademarks. A regular registered trademark enjoys protection only within the particular goods and services and within a particular location but a well-known trademark enjoys protection across all classes of goods and services and at all national and international levels[2]. This means that if a proposed trademark is similar to a well-known mark that mark will not be registered even if it belongs to a different class of goods or services from that of the well-known mark.

EXAMPLES OF WELL-KNOWN TRADEMARK

Following are a few examples of what marks have been recognized as well-known trademarks:

  1. Tata
  2. Bisleri
  3. Coca-Cola
  4. Whirlpool
  5. Apple
  6. Intel
  7. Nike
  8. Bajaj
  9. Amazon
  10. Google

These well-known trademarks are popularly known at both national and international levels and therefore cannot be used by any businesses in the entire world as they are protected by all national and international trademark laws.

LEGAL FRAMEWORKS

Section 11(2) of the Act[3], Protects the well-known trademarks across all classes of goods or services. It states that a trademark being identical or similar to an existing trademark will not be registered if the existing trademark is a well-known trademark in India.

Section 11 (6) of the Act[4] specifies the factors to be taken into consideration for determining a well-known trademark. These factors[5] are as follows:

  1. Knowledge and recognition of the trademark among the relevant portions of the public
  2. Duration, Extent, and Geographical area where the trademark is used. The duration may be short or long.
  3. Promotion of the trademark through advertising and publicity.
  4. Registration or Application for registration of Trademark till the extent it reflects the use and recognition of the trademark.
  5. Record mentioning the successful enforcement of rights where the trademark has been declared to be a well-known trademark by any court or registrar

PROCEDURE FOR OBTAINING A WELL-KNOWN TRADEMARK

To obtain the status of a well-known trademark the trademark owner has to submit the TM-M form along with a fee of 1, 00,000 mentioned in Rule 124 of the TM Rules 2017[6]  to the registrar. This rule states that the registrar will grant the designation of “well-known” upon the application made by the owner. The application must be supported along with the following documents:

  1. Statement of case describing the applicant’s rights and claims that the mark is well-known
  2. Copy of judgment of any court or the Registrar determining the trademark as Well-Known and evidence regarding successfully enforcing the rights of the trademark.
  3. Evidence supporting the use of the trademark, application of registration obtained, number of actual consumers of goods or services, evidence as to the publicity and advertisement of the trademark and the expenses incurred, evidence regarding recognition of the trademark in the relevant portion of the public both national and international level.

The registrar will consider the application made by the applicant after examining the above-mentioned documents. The officer may publish it in the well-known trademark lists for any objections. If there are any objections the officer will communicate the same to the parties concerned. If the trademark is held to be a well-known trademark, it will be included in the well-known trademark list and will be notified in the trademark journal[7].

REMEDIES FOR INFRINGEMENT OF WELL-KNOWN TRADEMARK

For infringing the well-known trademark the owner of the famous trademark can claim punitive damage. In the case of Time Incorporated v. Lokesh Srivastava[8], the Delhi High Court held that in IP cases the owners are to be granted both punitive and compensatory damages. In this case, the plaintiff is granted 5 lakh rupees as compensatory damages and 5 lakh rupees as punitive damages additionally[9].

The act of infringing a trademark is considered a cognizable offence under the trademark act and thus the offender will be punished with three years imprisonment with or without a fine. 

The trademark owner can prevent the use and registration of a mark that is deceptively similar or identical to that of the well-known mark and the later trademark will be deleted. Further, the owner can stop any organizations or companies from using the well-known mark in their organization names or company names[10].

JUDICIAL PRONOUNCEMENTS

The Indian judiciary in different cases protected well-known trademarks from infringement and ensured the rights of the owners. Following are the examples of such case laws:

In the case of Daimler Benz v. Hybo Hindustan[11], the defendant was using the word ‘Benz’ and the mark of the plaintiff. The court based on reputation and goodwill determined the mark of the plaintiff to be a well-known trademark and granted an injunction to the defendant from using the well-known trademark of the plaintiff.

In the case of Whirlpool Co & Anr v. N R Dongre[12], the plaintiff used to sell their machines in the US without registering their trademark but the trademark gained enough reputation through the use and advertisement in the international magazines. The defendant started using the mark in their washing machines. The court granted an injunction to the defendant from further using the mark because of the transborder reputation of the plaintiff’s mark in India.

In the case of Rolex Sa v. Alex Jewellery Pvt Ltd & Ors[13], the defendant was dealing with their products by using the name ‘ROLEX’. The court considered the plaintiff’s mark as a well-known trademark because of the reputation they have among the public and granted an injunction to the defendant from dealing with any kind of products or jewellery. The court further opined that there is a chance for the public to believe the products bearing the same trademark belong to the plaintiff.

CONCLUSION

In a competitive market, the concept of well-known trademarks plays an important role in expanding businesses at national and international levels. The well-known trademarks are given extra protection in the eyes of the law due to their brand value, reputation, and recognition among the public. It safeguards the trademarks from infringement and protects the owners. Well-known trademarks also help consumers by ensuring the reliability and quality of goods or services.

Author(s) Name: Joysri Mondal (Heritage Law College, Calcutta University)

References-

[1] Trade Marks Act 1999, s 2(z)(g)

[2]  Shreya Singh, ‘Issues and Challenges of Well-known Trademarks in 21st century’ ( Manupatra, June 16 2022) <https://articles.manupatra.com/article-details/Issues-and-Challenges-of-Well-known-Trademarks-in-21st-century > accessed 13 August 2024

[3] Trade Marks Act 1999, s 11(2)

[4] Trade Marks Act 1999, s 11(6)

[5] Abhishek Chaudhari, ‘Well Known Trade-Mark Protection In India: Need For Legislative Enactment’ (2018) 6 (1) IJCRT <https://ijcrt.org/papers/IJCRT1705232.pdf > accessed 17 June 2024

[6] Trade Marks Rules 2017, r 124

[7] Priyanka Mangaraj, ‘Well Known Trademark in the 21st Century’ ( Iprlawindia, January 1 2021) <https://iprlawindia.org/wp-content/uploads/2021/03/Priyanka-Mangaraj.pdf > accessed 13 August 2024

[8] Time Incorporated v. Lokesh Srivastava & Anr (2005) 116 DLT 599

[9] Sonal Sodhani, ‘All You Need To Know About Well-Known Trademarks’ ( Mondaq, May 22 2019) < https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks  > accessed 17 June 2024

[10] Sunil Prakash Dhadwad, ‘Passing off and Infringement of Well-Known Trade Mark’s in India’ (2018) 1 (4) IJLMH <https://www.ijlmh.com/wp-content/uploads/2019/03/Passing-off-and-Infringement-of-Well-Known-Trade-Mark%E2%80%99s-in-India.pdf > accessed 13 August 2024

[11] Daimler Benz Aktiegesellschaft v. Hybo Hindustan (1994) AIR DELHI 239

[12] Whirlpool Co & Anr v.N R Dongre (1998) PTC DEL 698

[13] Rolex S A v. Alex Jewellery pvt. Ltd (2009) 41 PTC DEL 284

JusCorpus / About Author
More posts by JusCorpus