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Effect of Declaration of Well Known Trademark in Old Trademark Regime

The case under review involves an appeal against the Deputy Registrar of Trade Marks' order dated 19.04.2012, which rejected the appellant's application to register the word mark "ZEE" under class 5. The rejection was primarily based on the opposition from the first respondent, who claimed its trademark to have been declared as well known trademark . This article explores the factual background, court's analysis, and implications of the decision, with a specific focus on the effect of declaring a trademark as well-known.

Factual Background:
The appellant, engaged in manufacturing and marketing insecticides, has used the mark "ZEE" since 1998. Seeking legal protection, the appellant filed an application on 04.10.2000 to register the mark under class 5, which includes pharmaceuticals and related products. The application proceeded without incident through preliminary procedures and was published in the Trade Mark journal.

However, the first respondent opposed the registration, citing prior use of the word "Z" or "ZEE" in combination with other terms. The first respondent claimed to have at least 14 registrations involving "Z" or "ZEE". The Respondent No.1 also asserted that its ZEE Trademark has been declared as well known Trademark.

Court's Analysis and Decision:
The court's analysis focused on two key points:
Combination Marks and Class Registration: The first respondent's mark did not appear in isolation but was combined with other words. Additionally, none of the first respondent's marks were registered under class 5, which is crucial since the appellant's mark application pertained specifically to this class.

Well-Known Mark Doctrine: "While the first respondent's mark might be considered well-known today, this was not necessarily the case in 1997. The concept of a well-known mark was not recognized under the Trade Marks Act, 1958, which was in force at the time of the appellant's application. Despite this, the Registrar invoked the well-known mark concept to decide the issue."

Under Section 12 of the Trade Marks Act, the Registrar has the discretion to impose conditions to ensure that similar marks can coexist. Section 11 is subject to Section 12, which implies that even well-known marks do not automatically override other marks. The legislative intent is to provide a balanced approach, allowing for coexistence under certain conditions.

The court found merit in the appellant's appeal, noting that the Registrar had not adequately considered whether both marks could coexist with appropriate conditions under Section 12. Consequently, the court allowed the appeal and remanded the matter back to the Trade Mark Registry for reconsideration, emphasizing the need to reassess the application in light of the observations made.

This case highlights several important implications for trademark law and practice:
  • Thorough Evaluation for Coexistence: The Registrar must thoroughly evaluate the potential for coexistence of similar marks across different classes. Section 12 provides the flexibility to allow similar or identical marks to coexist under specific conditions, reflecting a balanced approach that considers the interests of both parties.
  • Timely Decision-Making: The case underscores the importance of timely decisions by regulatory authorities. The twelve-year delay in the Registrar's decision caused undue prejudice to the appellant, emphasizing the need for efficiency in trademark application processing.
  • Well-Known Marks Doctrine: The declaration of a mark as well-known has significant implications, but it must be applied judiciously. The court's decision reinforces that the well-known status of a mark should not automatically preclude the registration of other similar marks, especially when they pertain to different classes or can coexist with conditions.
  • Legislative Intent and Judicial Interpretation: The case demonstrates the importance of adhering to legislative intent and judicial interpretation in trademark disputes. The interplay between Sections 11 and 12 of the Trade Marks Act is critical, ensuring that well-known marks do not monopolize the market to the detriment of other legitimate mark holders.

The appeal against the Deputy Registrar of Trade Marks' order reveals crucial aspects of trademark law, particularly the effect of declaring a trademark as well-known. By remanding the case for reconsideration, the court has set a precedent for a balanced and judicious approach in trademark registration disputes. This decision will likely influence future cases, promoting fairness and thorough evaluation in the trademark registration process.

Case Citation: Prem Biyani vs Zee Entertainment Enterprises: 07.03.2024: OA/26/2015/TM/CHN: Madras High Court: N.Seshasayee. H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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