Trademark Protection & Enforcement:
Trademark protection besides granting exclusive rights to the applicant for using the trademark, also prevents any unlawful and unauthorized use of the mark by any third person. Accordingly, the applicant of a trademark can enforce his/her trademark rights against infringers via an infringement suit and/or a suit for passing off.
Being recognized as a well-known mark either by Court and/or Trade Mark Registry is the rarest and strongest protection granted to any mark under the Trade Mark law and has a number of benefits. The most prominent one being able to restrain registration and use of any identical and/or deceptively similar mark across any category/class of goods and services under the Trade Marks Act, 1999. Eg: Use of the mark BAJAJ for steel containers and utensils was restrained as the mark BAJAJ used for electrical goods and electronic devices/appliances has become a well-known mark and has transcended its category of goods and services (AIR 1988 BOM-167)
Infringement or Passing Off?
It is pertinent to note that these 2 remedies available for unlawful and unauthorized use of a trademark are different from one another. One major difference between infringement and passing off suits is the fact that an action for infringement can be brought only if the Applicant has a registered trademark in India, whereas, the passing off suit, a tort founded on common law principles, can be invoked for even an unregistered trademark.
Also, infringement action is a statutory remedy enshrined in the Trade Marks Act, 1999, contrary to the passing off action, which is not defined in the Act, rather is a common law principle.
An action of infringement has its own leverage over a passing off action. Though the latter right has been conferred upon the unregistered user, the burden of proof is more severe than that in any action for infringement. A person claiming an action for passing off has to pass the classical trinity test which makes the claim difficult while any claim for infringement succeeds if the plaintiff is able to prove that the impugned trademark is a colourable imitation of the plaintiff’s trademark. Deception is an important element for a claim against passing off but it hardly holds any significance in an action for infringement. Both the actions are different from each other in many aspects, but none can be said to be superior to the other.
"Well-Known Trademarks"
In India, Section 2 (1) (zg) of the Trademarks Act, 1999 clearly defines a 'well – known trademark' 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."
The above definition clearly demonstrates extraordinary protection provided to a well-known mark which is not restricted to a particular category of goods and/or services.
Relevant Provisions under the Trade Marks Act, 1999:
Section 11(2) –
This recognises one of the relative grounds of refusal of a trade mark stating that a trade mark shall not be registered if or to the extent the earlier trade mark being a well-known trade mark in India.
Section 11(6) –
This section lays down the criteria for determination of a well-known mark, which is as follows:
- 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;
- the duration, extent and geographical area of any use of that trade mark;
- 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;
- 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;
- 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(9) –
It lays down the conditions/factors which are taken into consideration for grant of a well-known trademark. There are:
- That the Trademark is registered in India
- That public at large has knowledge of the trademark
- That the Trademark has been used in India
- Application for registration of trademark is underway in India
- That the trademark is registered in any other jurisdiction
Section 11(10) –
This section sets out an obligation on to the Registrar of Trade Marks to protect a well-known trademark against marks which are identical and/or similar.
Procedure to file
Rule 124 of the Trademark Rules of 2017, sets out the procedure for filing of well-known trademarks which is as following:
- Application to be filed under Form TM-M to initiate the process for the recognition of a well-known trademark.
- The form is to be submitted via E-filing only and a fee of Rs. 1,00,000 is to be paid.
- The documentary evidence including Statement of case and evidence in support of the applicant's right to be filed. For a successful application, the following documents should be filed in the form of evidence:
- Evidence showing use of trademark in India and/or abroad;
- Any domestic or international registrations for the mark, if any;
- Awards and recognitions, if any;
- Annual sales turnover, worldwide including India in relation to goods sold and/or services provided under the mark;
- Annual promotional and advertisement expenses, worldwide including India in relation to goods sold and/or services provided under the mark;
- Number of actual or potential customers of goods and/or services; Promotional and advertisement material;
- Details of enforcement actions and the orders passed;
- Details of any order recognising the mark to be a well-known mark, if any.
- All documentary evidence is to be submitted in a PDF file where the size of the document does not exceed 10 MB.
- The office then scrutinises the documents submitted to the Trade Mark Registry.
- The examination of application by publication is conducted.
- The Registrar may call for further documents, as he thinks fit for the purposes of examination and/or determination;
- Objections to the mark are to be processed and dealt with by the Applicant, if any.
- Thereafter, the Registrar, before determination of a trade mark as a well-known mark, may invite objections from the general public which are to be raised and filed, if any within 30days from the date of invitation of such objections.
- If the mark is approved and declared as "well-known" mark by the Registrar, it is then published in the list of well-known marks maintained by the Trademark registry, which is also available online.
- Even after registration, the Registrar, may at any time remove such mark from the list, if it is found that the same has been erroneously or inadvertently declared as a well-known mark.
- Appeal against this decision of the Registrar, if any, to be filed before High Court (earlier IPAB) within three months from the date of such decision.
A few relevant cases:
In Kamal Trading Corporation & Ors. vs. Gillette UK Ltd., England [1998 PTC 288 DB], Defendant was found to be using Plaintiff's '7 O'CLOCK' mark in relation to tooth brushes. Hon'ble Bombay High Court restrained the Defendant from using the mark '7 O'CLOCK' by acknowledging the transborder reputation of the Plaintiff and well-known character of Plaintiff's said mark. While passing the order, Hon'ble Court also observed trading in India is not mandatory to show goodwill and reputation of a mark in the country.
In Daimler Benz Aktiegesellschaft vs. Hybo Hindustan [1994 PTC 287], the Defendant was found to be selling undergarments under the Plaintiff's mark 'Benz' along with a 'three-pointed human being in a ring'. The Plaintiff company, during the time, held a great repute pertaining to sale of premium cars. The Hon'ble Delhi High Court, while acknowledging the well-known character of Mercedes Benz held that it would be "perverse" if such a revered and widely known trade mark is being used for dissimilar goods of such nature.
In N.R Dongre vs. Whirlpool Corporation [1996 5 SCC 714 ], the court identified and considered the goodwill and reputation of the mark 'Whirlpool' even though they did not actually carry out business within the territory of India. The court, while granting reliefs, observed that considering that the extensive international advertising of the brand, there was an incidental impact within the country.
In Rolex Sa vs. Alex Jewellery Pvt. Ltd. [2009 (41) PTC 284 (Del.)], the Defendants were found to be using the mark of 'Rolex' in relation to artificial jewellery. The Plaintiff brought an action to prevent further use of their mark. The court observed that the Plaintiff company was a premium watch company and was well-known amongst people dealing and buying watches. The same section, upon seeing the artificial jewellery with the same name might assume that the same was an extension of Plaintiff's business and thus restrained Defendants from selling the same.
In Tata Sons Ltd. vs. Manoj Dodia, [CS(OS) No. 264/2008 and CS(OS) No. 232/2009], the Court while granting reliefs, laid down a 10-factor test to determine whether or not a trademark maybe identified as "well-known," which is as follows:
- The extent of knowledge of the mark vis-à-vis the relevant public segment
- Duration of use
- Extend 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
- Actual number of consumers consuming goods or availing services under the brand.
Enforcement of Well-known Trademark
Well-known marks, as mentioned above, is accorded an extraordinary protection under the Trade Marks Act, 1999 and may be enforced as follows:
- At the registration stage, a conflicting and/or similar mark under any classes would be objected by the Examiner of Trade Marks under Section 11(2);
- The owner of a well-known mark can institute an infringement and passing off proceedings before a civil suit seeking injunction and damages against anyone who is found to be using a deceptively similar/identical mark for same, similar or different business activities. As seen in the cases above, infringers using a well-known mark albeit in relation to different business activities have also been restrained by Courts;
- On a different note, if a particular artistic work encapsulating well-known combination of colors, get-up, features and/or trade dress is being used by any infringer, the owner of such well-known trade dress and/or artistic work can even initiate a criminal action under Section 63 of Copyright Act, 1956, wherein, such infringing goods may be seized and such infringers may be arrested by following due process of law.
Due to introduction and streamlining of procedure under the new Trademark Rules of 2017, we are already witnessing an upsurge in the number of applications being filed before the Trade Mark Registry. Presently, the list includes 97 marks being recognised as well-known marks with thousands of applications pending. The companies having well-known marks and/or brands should definitely utilize this opportunity to make an application and availing extraordinary protections and benefits under the Act. For a successful application and processing, it is important that such application is attached with strongest of the documents and material to prove well-known character of the subject mark. However, the authorities, while examining such applications, must proceed with caution, as such protection will have an effect of restraining all identical and/or similar marks for related and/or unrelated goods.
Created & Posted by Sony Garg
Accountant at TAXAJ
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