WHY DO WELL KNOWN TRADEMARKS REQUIRE SAFEGUARDS AGAINST THE SIMILAR OR IDENTICAL TRADEMARK REGISTRAB
By Sukhmani Kaur-
Companies invest millions of dollars to build their reputation and establish themselves in the competitive market. This investment is encashed when a consumer recalls certain characteristics about the company when they see its ‘trademark’. With the new trade mark rules 2017, a new procedure has been created that allows the registrar to proclaim a particular trademark as “well-known”. According to the new rule, a trademark owner can file an application in form of TM -M with a request made to the registrar for declaring the mark has been vouchsafed with extraordinary protection and safeguards against passing off and infringement of such trademarks. A Well – known trademark is recognised on the basis of their reputation, nationally, internationally and even across borders .
Take the example of ‘Bens’. When a consumer sees the trademark of ‘Benz’ on a product, he is rushed with the idea of great quality cars. However, ‘Benz’ not only personifies ‘great cars’ but also the loyalty and trust that the company has created over time. It is hence important to not just preserve the identity of ‘Benz’ as an automobile company, but as a company of great service and quality. This is why its ‘ trademark’ is protected, even when someone tries and manufactures ‘ undergarments’ in the name of it. The case of Daimler Benz Aktiegesellschaft .v. Hybo Hindustan (1993) brought ‘Benz’ into the category of ‘ well-known’ trademarks.
A trademark in general refers to a mark that distinguishes one enterprise from the other. Section 2(zb) of the trademark act (1999) defines a trademark as “ a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from the others.
Well-known trademarks are ‘ special trademarks’ which are defined in section 2 (zg) of The Trademark Act (1999). The section defines well- known trademarks as ‘ marks of companies that have become so substantial to a section of the public that uses such goods or receive services from those companies, that the use of that mark while using other goods and services would also be taken as a connection with the company that renders such goods or services’.
While trademarks only protect the goodwill of a company to a specific geographical area or range of products, well-known trademarks protect the same across the nation and for all types of goods and services (Sodhani ,2019) . Hence , when artificial jewelleries were sold in the name of ‘ Rolex’ , the court in the case of Rolex sa .v. Alex jewellery Pvt. Ltd. And ors. (2009) , granted an injunction towards it , even when Rolex only manufactures watches . This is the extraordinary protection that a brand gets after being recognised as well- known .
PROVISIONS RELATED TO WELL-KNOWN TRADEMARKS:
1. Rule 124 of trademark rules 2017
This rule permits the trademark owners to file a request for grant of “well-known” trademark to the registrar in form of TM- M . Before the coming up of this rule, a mark was declared well-known only after proceedings, rectification and opposition held before the Hon’ble courts. With the advent of this rule and the procedure laid thereof, a trademark owner can request for a well-known trademark without getting into any proceedings or rectifications. Rule 124 ensures a trademark to be granted the tag of “well-known” merely by an application of request to the registry .
2. Trademarks Act ,1999
• 11 (2) protection of well-known marks across all classes
The provision of this section extends the ambit of protection provided to the well-known trademarks. According to this clause, well-known trademarks are to be recognised and protected across all the classes of goods and services.
• 11(6) Factors taken into consideration while determining the trademark as well-known
A joint resolution concerning provisions on the protection of well-known marks was adopted by WIPO in the year 1999 in order to protect the well-known marks from misuse and infringement, wherein various factors to determine a well-known trademark was enlisted. India being a member of the World Trade Organisation, adopted these factors and enshrined them in clause 6 of section 11 of the Trademarks Act. These determining factors include :
A) Knowledge about the mark in relevant sections of the public.
B) The duration, extent and geographical area in which the trademark is used .
C) The duration extent and geographical area in which the trademark is promoted with respect to the goods and services to which it applies.
D) Registration or application for registration of the trademark to the extent they reflect the use of recognition of the trademark.
E) The record of successful enforcement of the right in that trademark including the record stating that the trademark has been recognised as well-known by any court of the registrar.
• 11(9) conditions not required for well-known trademark registration
The section specifically mentions certain conditions which need not be required for the purpose of granting of well-known trademark.
These conditions are :
A) That the TM has been used in India
B) That the TM has been registered
C) That the application for registration of the trademark has been filed in India.
D) That the trademark is well known in or registered in any other jurisdiction other than India
E) That the trademark is well known to the public at large in India.
It is thus be stated that for a trademark to be granted protection in India, it is not necessary that the mark owner has his business in India or its trademark is registered within India, nor is it required that the trademark is known to the masses as a whole. Thus, the particular provisions provide for the concept of trans-border reputation of a trademark.
• 11(10) – obligation on the registrar
It is an obligation on the registrar that in case of a dispute and /or infringement the registrar must protect the interest of the well-known trademark against the identical ones and also must take into consideration and notice the ill intentions and malafide motive of the complaint or the opponent.
FILLING OF A WELL-KNOWN TRADEMARK
With the incorporation of the new Trademark Rules, 2017. A trademark owner can directly file an application for a well-known trademark to the registrar. The said application of request should be accompanied with the statement of case , relevant documents, evidence, and a fee of Rs. 1,00,000/- which has already been prescribed. It is also mandatory that the application is to be filed online through comprehensive e-filling services of the trademark. Once the application is received, the application shall be considered in accordance with the documents submitted.
Remedies available for the trademark owner on misuse or infringement of well-known trademark
1. Prevent registration of similar and deceptive trademarks in respect to all the classes of goods and services.
2. Request removal of the infringing mark.
3. Prevent incorporation of the trademark in the name or logo of any organisation or corporate name.
4. Punitive damages- The judiciary has opined in several cases that punitive damages shall prevent the infringers from using and causing dilution of well-known trademarks. In case of Time incorporated .v. Lokesh Srivastava [2005(30) PTC 3 (Del. )] , the court held that in IP cases the court shall grant both punitive and compensatory damages. In the instant case, the Court granted Rs. 5 lakh as punitive damage and Rs 5 lakh as compensatory damage to the plaintiff for the reason of the infringement.
The well-known tag was considered to be the holy grail for trademark owners, where everybody would want it, but very few would get it. The number of well-known trademarks has increased from 68 to 81 in only two years, with the coming of the Trademark Rules ( 2017), the first part is indeed taken care of. There is a potential now for multiple applications for well – known trademarks to be filed. However, the registrar must exercise caution while considering these applications, as once a trademark is registered as well-known , no other party can use a mark even similar to it.
Author : Sukhmani Kaur
College name : Asian law college