Understanding Well-Known trademarks in India: Recognition, Protection and Benefits
The Trademarks Act, 1999, defines a well-known trade-mark, in relation to any goods or services, as, “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken 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.”
In other words, well-known trademarks are popular marks which are famous, as such, amongst significant portion of the consumers of certain goods and services. Statutorily, the popularity of well-known trademark is required to be of such a measure that any use of such trademark, even for completely distinct, dissimilar or different goods or services, has the likelihood of indicating a trade connection between such other goods or services and the proprietor of the well-known trademark. Well-known trademarks, thus, enjoy enhanced and robust protection under law in India.
Time and again, the Indian Apex Court and various High Courts have considered various factors and provisions of the law while determining the popularity of a trademark and recognising the same to be a well-known trademark.
Although the 1999 Act contained provisions which delineated the factors to be considered by the Registrar while determining a trademark as a well-known trademark, yet there were no prescribed procedure enabling a person to apply to the Registrar for such determination. For a long period of time, only High Courts were determining and declaring a trademark as well-known during the curse of infringement and passing-off proceedings. However, after coming into force of the Trade Mark Rules, 2017, any person may request the Registrar under Rule 124 to determine a trademark as well-known after complying with the requisitions mentioned therein.
Recently, in the matter of Eicher Motors Ltd., Vs. Nitin Service Point and Automobiles, [2023 SCC OnLine Mad 7565] the Hon’ble Madras High Court opined that concurrent powers are vested with the High Courts for granting recognition to a trademark as a well-known mark.
Further, for determination of the mark, the Hon’ble High Court also took cognizance of the following ten factors as follows:
The extent of knowledge of the mark vis-à-vis the relevant public segment;
Duration of use;
Extent of product and services to which the mark is being used;
Method, frequency and duration of advertising and promotion of the mark;
Geographical extent of trading area where the mark is being used
Registration of the mark;
Volume of goods and services being sold under the mark;
Nature and extent of use of same or similar marks by other parties
Extent to which rights claimed in the mark have been successfully enforced; and
Actual number of consumers consuming goods or availing services under the brand.
The important provisions, for Courts and the Registrar to refer, which governs the determination of well-known trademarks are:
1. Sec 11 [6] of the Trademarks Act, 1999 mentions the factors that the Registrar should take into consideration for determining a trade mark as a well known trade mark, which are:
(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 that 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.
2. Section 11 (7) of the Trademarks Act provides the factors which determine as to whether a trade mark is recognised by the public for the purpose of sub-section [6], which are :
(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.
3. Section 11 (8) of the Trademarks Act provides 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.
4. Section 11 (9) of the Trademarks Act, provides which conditions shall not be considered as conditions for determining whether a trade mark is a well-known trade mark, including the following:—
(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.
The above provisions streamline and simplify the process for courts; and, help proprietors protect their well-known trademarks against dilution.
A well-known mark offers recognition to its proprietor as a market leader in its field which directly results into fostering consumer confidence. New products or services that are introduced by the owners of a well-known trademark gain instant recognition from customers boosting their success potential.
Investors also prefer to invest in businesses which have the brand recognition and recall value accorded to well-known marks. Well known marks are also vigorously protected by law, making it more attractive to investors.
A well-known mark can be monetised through licensing as other businesses are willing to pay to use the trademark and get benefitted by association with the reputation and goodwill accrued to such trademark.
As the world becomes more connected through internet and online marketplaces, well-known marks transcend geographical boundaries. Well known marks imply quality and assurance associated with a particular product or brand.
Well-known trademarks are valuable assets, fiercely guarded by their owners and zealously protected by Courts under robust legal framework. Not to mention, they represent a mark of excellence and powerful tool for sustainable business success.
Authors:
Ms. Mahua Roy Chowdhury
Managing Partner
Mr. Jitendra Bohra
Partner [Trademark]
M: +91 89282 74062
L: +91 22 28313243
Website: www.royzz.com
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