Written by Abhishek Shaw
9th semester, Surendranath Law College
What is trademark?
A trademark is an identification word, symbol, configuration, device, shape of goods, packaging, combination of colours and any combination thereof adopted, engraved, printed, stamped or attached to a product or service and whose primary object or purpose is to identify the product or service from one manufacturer and distinguish them from others, to identify the source of the product or service, the ascertain the quality of a product or services as identical to other similar products or services manufactured or provided by the same and to act as an instrument of advertisement.
Section 2 (1) (zb) of the Trade Mark Act, 1999 defines trademark as: –
Trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and
I. In relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
II. In relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;
What is a Well-Known trademark?
A well-known trademark is a mark which over a period of time due to extensive usage and investment made in advertisement and promotion has acquired such a reputation /recognition in the market or among the public whether domestic or international in connection with such goods and services which cannot be separated from its identity. A general public or a person on having a glance on such mark is likely to draw a connection between the goods and services with which such mark is attached and manufacturer or the proprietor using such mark.
Section 2 (1) (zg) of the Trade Mark Act, 1999 defines well known trade mark as: –
Well known trade mark, in relation to any goods or services, means 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.
Statutory provisions for protection of well-known trademark
The Trade Marks Act, 1999 provides extraordinary protection to the trademarks that are accepted by the registrar as well know trademarks or by any court of law in comparison with a registered trademark, registered under the act itself.
Generally, a registered trademark is granted protection only within the sphere of its class of registration. However, such is not the case of well-known trademarks, they are granted protection even beyond the class of usage irrespective of the fact if they are registered India or not. Hence, they enjoy trans-border protection.
As it was held by the Delhi High Court in Tata Sons Ltd vs. Manoj Dodia and Others, a well-known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them.
On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation.
It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well-known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well.
The Delhi High Court In Yahoo Inc. v. Firoz Nadiawala held, “In my view the plaintiffs are right in their contention that YAHOO! has become a household name in India and has acquired the status of a well-known trademark by virtue of long and continuous use and that the defendant by making a film under title YAHOO! would cause the members of the public believe that the defendants’ production is in some way endorsed, sponsored and associated with the Plaintiff”
Obligations of the registrar: Determining factors of well-known Trademarks
The section 11(6) of the trademark act, 1999 makes it obligatory for the registrar to carefully scrutinize the facts which he considers necessary and also call for evidence for ascertaining whether a trademark is a well-known mark, such facts include but are not limited to the knowledge, reputation, recognition acquired as a result of promotion publicity presentation at fairs or exhibition of goods and services to which the trademark applies, duration, geographical area of use, records of successful enforcement of rights by any court or registrar.
Subsection (7) of section 11 provides with additional factors to be taken into consideration for determining whether the trademark is known or recognised to a relevant section of public such are the number of actual or potential consumer of goods or services, the number of people involved in distribution and the business circle to which the trademark applies. Further subsection (8) provides that if a trademark is declared by a court to a well-known in atleast one relevant section of the society, or by the registrar, the registrar shall consider the trademark as well – known under this Act.
As per section 11(6) of the Trademarks Act, 1999: –
The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including:
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.
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account–
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.
(8) 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.
Factors not required to be taken into consideration
The factors that are not relevant or the conditions that are not required to be imposed are that the trademark be used in India or registered, an application for registration of trademark be filed in India, that the trademark be well-known, an application for registration be filed in any jurisdiction other than India, the trademark be well-known to the public at large.
As per section 11(9) of the Trademarks Act, 1999: –
The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: –
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.
Other Obligation of the registrar
Section 11 (10) (i) makes it obligatory on the part of the registrar while considering applications for registration of trademark to protect the well-known trademarks against the identical or similar trademarks, take into consideration the bad faith involved of the applicant or the opponent affecting the rights relating to the trademark.
As per section 11(10) of the Trademarks Act, 1999: –
(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall–
(i) protect a well-known trade mark against the identical or similar trademarks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.
Exception to the above-mentioned laws on protection of well-known trademark
As per section 11(10) of the Trademarks Act, 1999: –
(11) Where a trade mark has been registered in good faith disclosing the material information to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.
Registration of the well-known trademarks
As per rule 124 of the Trademarks Rule, 2017 an application for determination of well-known marks can be made by any person via online portal in form TM-M and after payment of fees as specified in the first schedule which is ₹ 100,000/-, such application shall also be accompanied by statement of case along with documents and evidences relied upon, for the purpose of determination, the registrar may call for further evidence or documents as he thinks fit, further the registrar may call for objections from the general public within 30 days from the date of invitation of such objection.
On successful completion of the above-mentioned formalities the registrar will publish the trademark in the trademark journal and also enter the trademark in the list of well-known trademarks maintained by it.
Remedies for infringement of a well-known trademark
The remedies available in the case of infringement of a Well-known trademark are both civil and criminal
Civil Remedies
- Interlocutory/ temporary/ Ad-interim Injunction,
- Permanent/ perpetual injunction,
- Search and seizure,
- Delivery of infringed goods and/or destruction,
- Pecuniary Damages, and
- Accounts of profits.
Criminal Remedies
In case of infringement for the first time the offender can be imprisoned for a term of not less than 6 months which can extent up to 3 years and with a fine not less than ₹ 50,000/- but which may extend up to ₹ 200,000/-
Provided the court may for adequate and special reason to be recorded in writing may impose a lesser sentence than 6 months and a lesser fine than ₹ 50,000/-
In case of subsequent conviction, the offender shall be imprisoned with a term of not less than 1 year but which may extent up to 3 years and with fine which shall not be less than ₹ 100,000/- but may extent up to ₹ 200,000/-
Provided the court may for adequate and special reason to be recorded in writing may impose a lesser sentence than 1 year and a lesser fine than ₹ 100,000/-
Relevant cases
In Tata Sons Ltd vs. Manoj Dodia and Others , 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.
In ICICI Bank Ltd. v. Chuandong XU , the court observed that the trade mark ICICI was used extensively and widely and was highly distinctive. Further by virtue of extensive publicity and use of the mark around the world, the trade mark had acquired significance of a well-known mark.
In Rolex SA V. Alex Jewellery Pvt. Ltd the court stated that ROLEX is a well-known trade mark from the point of view of that segment of the public which uses the high-quality watches.
In Microsoft Corporation Kurapati Venkata V. Jagdeesh Babu , the court stated that it was evident that the trade mark Microsoft was a well-known trade mark. The same was known to most of the people in the entire world. No one was entitled to use the same either as a trade mark or part of its trading style/ corporate name in relation to similar or dissimilar business as the said trade mark had got a unique goodwill and reputation.
