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The Safeguarding Of Well: Known Trade Mark In India

The term "Well-known Trade Marks" refers to marks, which may include words or logos, that have acquired significant reputation and goodwill in the market through legitimate trade practices. These marks may be associated with earlier marks, even when used for different goods and services. Famous trademarks, akin to registered trademarks, are safeguarded in India pursuant to the Trademark Act of 1999.

In order for a trademark to achieve well-known status, it must attain recognition from a significant portion of society and establish its own distinct goodwill that sets it apart from other competitors. The Indian Patent office acknowledges the national, international, and cross-border reputation of well-known trademarks in India. This article will provide a concise overview of the origin, evolution, legal provisions, and notable cases pertaining to renowned trademarks.

It is not widely acknowledged that numerous trademarks currently acknowledged in India are, in fact, well-known trademarks. This article aims to analyze the significant modifications that have occurred in the notion of a renowned trademark since its inception.

The Etymology Of Popular Commercial Brands

The etymology of the widely recognized trademark can be traced to the Paris Convention for the safeguarding of Industrial property in the year 1883. According to Article 6bis(1), it is impermissible to employ a trademark that is indistinguishable, suggestive, or translated from a mark that is recognized as well-known in any nation.

This implies that the use of a trademark that is a replica, a mimicry, or a translation that could lead to confusion of a mark that has been acknowledged by the relevant authority in the country of registration or usage as being well-known and already belonging to an individual entitled to the advantages of this Convention and utilized for comparable or identical goods is prohibited.

The provision solely caters to marks applicable to goods and not services. However, the TRIPS agreement subsequently broadened the scope by encompassing the utilization of well-known trademarks from goods to services.

In regards to the subject of a trademark that is eligible for protection, the TRIPS Agreement stipulates that "any symbol or combination of symbols that can differentiate the products or services of one company from those of others can serve as a trademark." Therefore, the TRIPS Agreement accords equal treatment to both product and service trademarks, and its members are required to establish appropriate registration systems for service marks. Following the Paris Convention and the TRIPS Agreement, member countries have enacted revisions to their respective Trade Marks laws, thereby instituting safeguards for the protection of well-known marks.

The Process Of Reconstructing Popular Trademarks In India

The practice of utilizing a symbol to ascertain the origin of production of a commodity is a time-honored tradition. The idea underwent commercialization subsequent to the advent of the industrial revolution on a massive scale. Consequently, mass production of homogeneous goods ensued, and these trademarks were employed to distinguish the merchandise of distinct producers. Prior to 2003 , the safeguarding of established trademarks was accomplished through Section 47 of The Trade and Merchandise Marks Act of 1958.

This provision stipulated that if a registered trademark in verbal form had gained significant renown for a particular category of goods, any other trademark that could potentially create an association with the aforementioned trademark would be ineligible for registration. However, if the owner of the original trademark did not utilize it, this would not impede the registration of other trademarks for different goods.

Significant modifications have been implemented in the Trade Marks Act of 1999 following the 2003 amendment, which has resulted in the replacement of the Trade & Merchandise Marks Act, 1958 (presently abolished). The legal precedent that established the notion of a well-known trademark in India is the case of Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. The present case concerns a dispute pertaining to the trademark 'Caltex'.

The respondent has alleged that the applicant has been using their trademark for goods registered under a different class. The respondent claims to have been using the mark in India for their goods since 1937 and has carried out extensive publicity. The respondent argues that the applicant's proposed trademark is identical to their own and therefore has the potential to cause deception and confusion in the trade.

Upon submission of the affidavit, the deputy registrar determined that the trade marks in question were identical, however, it was noted that the goods associated with each party were distinct in nature. He maintained that the opposition's goodwill was limited to the products for which their trademarks were being utilized. The appellant has filed an appeal in defiance of a prior judgment, after an appeal was filed by the opponent and decided in their favor.

Upon considering multiple factors, the Bombay High Court determined that based on the presented facts and evidence, it is evident that CALTEX, a widely recognized trademark, has the potential to cause confusion and deceive the general public, despite the fact that the goods and services of the parties are registered under different classes. The courts consider the exploitation of a well-known trademark's deceptive nature to gain an unfair advantage in terms of goodwill as an act of infringement.

However, the aforementioned narrative predates the implementation of the Trade Mark Rules 2017, which delineates a protocol for submitting an application to the registrar to ascertain a trade mark as being well-known.

The Provisions Pertaining To Well-Known Trademarks Are Of Significant Importance

  1. The Trade Mark Act, 1999
    1. The definition of a well-known trade mark, as per the Trade Mark Act of 1999, pertains to a mark that has gained significant recognition among a substantial segment of the public that utilizes the goods or services associated with the mark. The use of such a mark in relation to other goods or services may be perceived as indicative of a connection in the course of trade or the provision of services between the goods or services in question and the individual employing the mark in relation to the former.
    2. Section 11(6) provides a set of criteria for ascertaining the status of a trademark as a well-known trademark. These criteria include:
      1. The dissemination of knowledge and awareness pertaining to trademarks among a pertinent segment of the population.
      2. This inquiry pertains to the temporal, spatial, and promotional dimensions of a trademark's utilization and dissemination.
      3. The effective implementation of legal entitlements and acknowledgement by a judicial body or official registry.
    3. The Registrar shall consider the following factors in assessing the public recognition of a trademark, as per Section 11(7).
      1. The quantity of individuals who are currently or potentially able to consume goods and services.
      2. The quantity of individuals engaged in the channel of distribution of goods or services.
      3. The term "business circles" refers to groups of individuals or organizations engaged in the exchange of goods or services.
    4. According to the criteria for determining a well-known trademark, it is necessary for the trademark to be recognized as such by a significant portion of the public. {Sec 11(8)}
    5. The determination of a trademark as a well-known trade mark does not necessitate the fulfillment of the following conditions. {Sec 11(9)}-
      1. The term "Trade Mark" has been utilized within the jurisdiction of India.
      2. The trademark has been successfully registered.
      3. A request for the registration of a trademark has been submitted.
    6. Section 27(2) of the relevant legislation offers the recourse of passing off for trade marks that are widely recognized.
      1. Opposed to the registration of trademarks that bear significant resemblance to existing ones.
      2. Opposing the act of misusing a trademark.
  2. Trade Mark Rules 2017.
    1. Rule 124

Outline a protocol for submitting an application to the registrar to ascertain a trademark's status as well-known.

Individuals have the option to submit an application in Form TM-M and remit the fee specified in the First schedule to petition the Registrar for the assessment of a trademark as being well-known. The submission of a statement of case, along with all relevant evidence and supporting documents, is required to accompany the aforementioned request.

The registrar has the authority to request documentation in order to make a determination.

Prior to issuing an invitation for objection, it is necessary to consider the involvement of the general public.

The Registrar is authorized to eliminate any trademark from the roster of well-known trademarks in the event that it is discovered that the trademark was included erroneously or inadvertently, or if it no longer meets the criteria for inclusion in the list of well-known trademarks.

In accordance with Schedule First of the Trade Mark Rules 2017, the prescribed fee for submitting a Request to include a trademark in the list of well-known marks is Rs. 100,000. It is important to note that this fee can only be remitted online and is applicable for a single mark only.

Judicial Precedents
"No man is entitled to represent his goods as belonging to the goods of another man, and no man is allowed to use any mark, sign, symbol, device, or other means, whereby making a direct false representation to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is an ultimate consumer."

In the context of American jurisprudence, the legal doctrine of passing off was acknowledged as a means of forestalling the unjust exploitation of an individual's reputation or positive standing by a third party. The concept of passing off is not limited to commercial transactions, but also encompasses non-commercial and professional activities. Furthermore, it has been established that mens rea is not a prerequisite for the occurrence of passing off, as long as harm is incurred.

Lord Diplock's statement in Erven Warnink B.V. v. J.Townend & Sons (Hull) Ltd., outlines the fundamental components required for the redress of a passing off action, which is a legal matter that warrants academic attention.
  • misrepresentation,
  • made in the course of trade,
  • to ultimate consumers of goods or services supplied by him or to prospective customers of his
  • which causes genuine harm to a business or goodwill of the trader by whom the action is instituted or would likely cause such harm; and
  • which is calculated to harm the business or goodwill of another trader (in the sense that this is a reasonably foreseeable result).

In Bata India Limited v. Pyare Lal & Co., Meerut City And others (1985), it was observed that

"A remedy of passing off action shall apply where a deception and confusion may be caused for the product of someone else. It was also stated elements of mens rea and damage is irrelevant in a passing off action. The main question lies in the injury caused due to the deceptive nature of offending to plaintiff's interest.

A. Banerji, J. held that the name "Bata" was not a familial or botanical name, but rather a fanciful name used by a foreigner who established a business in the production of shoes and similar products in the country. The name had gained recognition in the market, and its use by another entity was likely to cause confusion and harm to the plaintiff-Company. As a result, a prima facie case was established, and the plaintiff (Bata) was granted a remedy for passing off against the defendant ( Batafoam).

7 O'CLOCK for shaving razors a product of Gillette U.K. Ltd.was the first trade mark to be recognized as well-known trade mark by Bombay high court in Kamal Trading Co. and Ors. v. Gillette U.K. Ltd.(1988).

In this case appellant an Indian company was given the license to trade through mark '7 O' CLOCK' but must suffix with 'EJTEK' for razor blade but also started selling tooth brushes under the same trademark. The court held that selling of tooth brush under the same mark which was not in agreement and manufactured by the respondent (Gillette U.K. Ltd.) will deceive the public regarding the origin of such product. It also accepted 70'Clock is well known. And usage of the mark in respect of tooth brush will lead to passing-off.

In Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan (1993), it was held that benz has gained huge recognition and goodwill in both nation and international market and use of such word to sell even a non-popular and completely different product may cause confusion and harm to the reputation of already established trade mark.

From this case onwards we can see that the main idea behind the decision isn't the likelihood of deception a similar trade mark can cause resulting in the prima facie case and remedy of passing off instead it was the concept of dilution of well-known trade mark i.e. if the usage of a well-known or similar/identical trade mark is satisfied then the remedy of passing off will be provided. Unlike in case of trade mark infringement where likelihood of deception have to be established to avail such remedy. This marks switching from the test of likelihood of deceptiveness to the dilution of well-known mark.

In Another case of Caterpillar Inc. v. Mehtab Ahmed (2002), the court held that Without a doubt, the plaintiff's trademark has come to stand for high-caliber goods, and the defendants' use of its name and its distinctive and individual stylistic elements suggests that they want to capitalise on the trademark owner's goodwill and reputation. It is nothing more than trade name piracy. Plaintiff is entitled to defend its mark, reputation, goodwill, and risk of dilution associated with the act of passing off against the defendants' cunning plans. The Delhi High Court, additionally analyzed the test of dilution of well-known Mark.

The use of alike marks for identical goods would degrade the worth of well-known mark and will also weaken its firmness and identification value in market. It also implied that the Opposition need not to show the likelihood of deception by usage of mark by Applicant in as much the evidence by Opposition of intention of Applicant for adoption of the mark was to ride upon the goodwill and reputation of popular mark.

In Ford Motor Company & Anr. v. Mrs. C.R.Borman & Anr. (2014), the court held that the plaintiff has proved beyond reasonable doubt the prestige and the goodwill of the trade mark in the market and its existence for a long period of time, its uniqueness and the extent of the geographical area of usage, the know-how of the trademark "FORD" to the general public. Thus, the mark has unquestionably gained the status of a "well-known mark". The present case was then settled between the parties on mutually agreeable conditions.

In Rolex Sa v. Alex Jewellery Private Limited & Others (2002), the plaintiff filed an application for interim relief of restrain against defendant who was selling artificial jewellery under the trade mark 'ROLEX' which belongs to plaintiff who deals in watches. The plaintiff clearly established his goodwill in the market and recognition of his trade mark by the general public to an extent that if somebody use word ROLEX it will leads to subconscious relation with the plaintiff product i.e. 'Rolex watches', ultimately establishing the trade mark as well-known trade mark. Defendant was held not entitled to use the word 'Rolex' for his jewellery and was also restrained from using domain name

ITC Limited v. Philip Morris Products Sa And Others. (2010), here the suit was filed due to the similarity of the logo used by parties to suit. It was alleged that though defendants are not using the trade mark of the plaintiff but their product packaging is identical to ITC's resulting in passing-off and infringement.

It was held that the logo used by plaintiff is for service purpose mainly with resorts, hotels, and the restaurants, hospitality sector whereas defendant uses it on cigarettes and there exist a material difference between the two products. Thus there exist is no link connecting the defendant's mark with the plaintiff's services, which may cause damage to the latter, and unfair advantage to the former and it was decided that temporary injunction won't be granted to plaintiff.

Sanjay Chadha Trading As Messers Eveready Tools Emporium v. Union Of India & Others (2022), a writ was filled by Mr. Sanjay Chadha against the order passed by the Intellectual Property Appellate Board, which removes petitioner's (Sanjay Chadha Trading As M/S Eveready Tools Emporium) 'everyday' from its name as per the petition of respondent (Eveready Industries India Limited).

It was established that respondent is using the word 'EVERYDAY' earlier from petitioner and has gained goodwill in market and recognition of general public, it deals with variety of product mainly consist of cell, battery, flashlights and is the largest seller as per market share and thus gained the status of a 'well-known mark' as per Section 2(1)(zg) of the Trade Mark Act, 1999.

It was argued by petitioner even though being aware of the use of word EVERYDAY by petitioner, the respondent never registered the said trade mark in respect of the product of petitioner's which include screw drivers and cutting pliers in Class-8.

The court held the Respondent's trademark is well-known and the High Court observed that:

Both parties' products are related and comparable commodities that may be found in large supermarkets and shopping centres. The sole criteria that must be met are whether the earlier trade mark is well-known and if using the later mark will diminish the earlier mark's distinctive qualities or reputation.

Hence, the petition of petitioner was dismissed and the order of IPAB was held to be well reasoned.

Initially, the concept of a well-known trademark was not fully developed, despite being referenced in the Paris Convention and (trade related aspect of intellectual property) TRIPS Agreement. However, over time, changes have been made to enhance the protection of well-known trademarks. These changes began in 2003 and have resulted in the protection of the same being nearly equivalent to that of registered trademarks.

Previously, it was up to the court to determine whether a mark was well-known. However, since the enactment of the Trade Mark Rules in 2017, this power has been granted to the registrar. As of now, 97 trademarks have been recognized as well-known trademarks.

Instances of individuals or entities misusing rights and privileges intended for societal benefit and progress are not uncommon. One such example is trade mark bullying, wherein established and larger organizations suppress small and emerging producers and sellers by coercing them to relinquish their unique trade marks. However, it is noteworthy that Section 142 of The Trade Marks Act of 1999 offers protection against such practices.

Based on judicial precedents, it can be inferred that the remedy of passing off was initially granted when the likelihood of deception by a similar trademark was established. However, this shifted to the dilution of a well-known mark, whereby the remedy of passing off is provided if the usage of a well-known or homogeneous trademark is satisfied. This may potentially encourage trademark bullying, as the use of a similar trademark in a similar product does not always cause confusion.

For instance, Dominos and Rominos are both renowned for pizza with similar trademarks, yet there is no confusion among the general public regarding them being two distinct brands. Therefore, it is crucial to focus on the level of deception that can be caused by any new trademark to be more equitable, particularly with the increasing number of startups and new businesses both online and offline, which heightens the likelihood of having similar trademarks.

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