WELL KNOWN TRADE MARK

[Mr. M. GOVINDARAJAN]

Introduction

The term ‘trade mark’ is defined under Section 2(zb) of Trade Marks Act, 1999 (‘Act’ for short).   Trade mark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors.  In relation to Chapter XII (other than section 107), a registered trade mark or 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.  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 to indicate to 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.

Well-known trade mark

The well-known trade mark was first discussed in the 1883 Paris Convention for the Protection of Industrial Property.  This convention set forth the principles for granting special protection to well-known trade marks.  Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), refers and offers protection to well-known trade marks which are neither registered nor used in the jurisdiction where protection is sought.

The term ‘well-known’ in relation to trade mark originates from the term ‘reputation’ which was recognized in the common law.  These marks are marks generally acknowledged to be marks which have a high degree of recognition and reputation in the areas of trade of the proprietors of such marks, and in many cases beyond the areas of trade of the proprietors of such marks.  They are critical business assets which can be used and traded just like any other assets. As such, these critical business assets deserve the fullest and widest possible protection in order that mark owners may fully exploit the value of such well-known marks.

International Protection for well-known trade marks

Well-known trade and service marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a well-known mark, countries may take advantage of the WIPO Joint Recommendations on the Protection of Well-Known Marks 

Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.

Protection of  well-known registered trademarks are only under the following conditions:

• that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation
• that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and
• that his interests are likely to be damaged by such use.

Article 16(2) of Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) provides that in determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

Joint Recommendations

The draft Provisions on the Protection of Well-Known Marks have been considered by the WIPO Committee of Experts on Well-Known Marks at its first session (November 13 to 16, 1995), second session (October 28 to 31, 1996) and third session (October 20 to 23, 1997).  The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, was adopted at a joint session of the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO (September 20 to 29, 1999).  It was recommended that each Member State may consider the use of any of the provisions adopted by the Standing Committee  as guidelines for the protection for well-known marks;

Factors for consideration

Article 1 provides in determining whether a mark is a well-known trade mark, the competent authority shall take into account any circumstances from which it may be inferred that the trade mark is well known.    In particular, the concerned authority shall consider information submitted to it with respect to factors from which it may be inferred  that the mark is, or is not, well known, including, but not limited to, information concerning the following:

• the degree of knowledge or recognition of the mark in the relevant sector of the public;
• the duration, extent and geographical area of any use of the mark;
• the duration, extent and geographical area of any promotion of the mark;
• the duration, extent and geographical area of any registrations to the effect they reflect use or recognition of the mark;
• the record of successful enforcement of rights in the mark; and
• the value associated with the mark.

Relevant sector of the public

Relevant sectors of the public shall include, but shall not necessarily be limited to-

• actual and/or potential consumers of the type of goods and/or services to which the mark applies;
• persons involved in channels of distribution of the type of goods and/or services to which the mark applies;
• business circles dealing with the type of goods and/or services to which the mark applies.

Where a mark is determined to be well known in at least one relevant sector of the public in a Member State, the mark shall be considered by the Member State to be a well-known mark.

Where a mark is determined to be known in at least one relevant sector of the public in a Member State, the mark may be considered by the Member State to be a well-known mark.

A Member State may determine that a mark is a well-known mark, even if the mark is not well known or, if the Member States applies subparagraph (c), known, in any relevant sector of the public of the Member State.

Factors which shall not be required

A Member State shall not require, as a condition for determining whether a mark is a well-known mark:

• that the mark has been used in, or that the mark has been registered or that application for registration of the mark has been filed in or in respect of the Member State;
• that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of any jurisdiction other than the Member State; or
• that the mark is well known by the public at large in the Member State.

Scope of protection

Article 3 provides that a Member State shall protect a well-known mark against conflicting marks, business identifiers and domain names, at least with effect from the time when the mark has become well known in the Member State.  Bad faith may be considered as one factor among others in assessing competing interests.

Conflicting mark

Article 4 provides that a mark shall be deemed to be in conflict with a well-known mark where that mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration, liable to create confusion, of the well-known mark, if the mark, or an essential part thereof, is used, is the subject of an application for registration, or is registered, in respect of goods and/or services which are identical or similar to the goods and/or services to which the well-known mark applies.

Irrespective of the goods and/or services for which a mark is used, is the subject of an application for registration, or is registered, that mark shall be deemed to be in conflict with a well-known mark where the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and where at least one of the following conditions is fulfilled:

• the use of that mark would indicate a connection between the goods and/or services for which the mark is used, is the subject of an application for registration, or is registered and the owner of the well-known mark and would be likely to damage his interests;
• the use of that mark is likely to impair or dilute in an unfair manner the distinctive character of the well-known mark;
• the use of that mark would take unfair advantage of the distinctive character of the well-known mark;

If the applicable law allows third parties to oppose the registration of a mark, a conflict with a well-known mark shall constitute a ground for opposition.  The owner of a well-known mark shall be entitled to request the prohibition, by a decision of the competent authority, of the use of a mark which is in conflict with the well-known mark. Such request shall be admissible for a period which shall not be less than five years beginning from the time the owner of the well-known mark had knowledge of the use of the conflicting mark.

Well-known trade mark in India

There was no provision in India for the protection of well-known trade mark.   Under the earlier 1940 and 1958 Acts, the term well-known trade mark was not defined and the Courts applied the ‘public knowledge’ principle and granted relief under the common law.  The Trade Marks Act, 1999 paves the way for protection of well-known trade marks.  Section 2(1)(zg) of the Act defines the term ‘well-known trade mark’  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.

Section 11 of the Act gives protection to the well-known trade marks.  Section 11 deals with the grounds for refusal of registration.  

Section 11(2) provides that a trade mark shall not be registered if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

Section 11(6) provides that 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-

• 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 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 recognized as a well-known trade mark by any court or Registrar under that record.

Section 11(8) provides that 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.

Section 11(9) provides that 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:-

• that the trade mark has been used in India;
• that the trade mark has been registered;
• that the application for registration of the trade mark has been filed in India;
• that the trade mark-

• is well known in; or
•  has been registered in; or
• n respect of which an application for registration has been filed in, any jurisdiction other than India; or

• that the trade mark is well-known to the public at large in India.

Section 11(10) provides that while considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall-

• protect a well-known trade mark against the identical or similar trade marks;
• take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

Section 11(11) provides that 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.

Section 29 of the Act gives protection from the infringement of trade mark.  In ‘ S.M. Dyechem Ltd. v. Cadbury (India) Ltd., 2000 (5) TMI 1060 - SUPREME COURT’ the Supreme Court held that It is well settled that the plaintiff must prove the essential features of his registered mark have been copied. The onus to prove ’deception’ is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its “essential features”. The identification of an essential feature depends partly on the Courts own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be ocular test alone; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark; 

                        The following are some of the well-known trade marks protected by the Court

Sl. No.	Trade Mark	Owner	Reported in
1	7 O’ clock	Gillette. UK	1998 PTC 288 DB
2	Bajaj	Bajaj Electrical Ltd	AIR 1988 BOM – 167
3	Bata	Bata India Ltd.	AIR 1985 ALL 242
4	BENZ	Daimler Benz	1994 PTC 287
5	Bisleri	Acqua Minerals Ltd.	2001 PTC 619
6	Dr. Reddy	Dr. Reddy Laboratories	2004 (29) PTC 435
7	DUNHILL	Alfred Dunhill Limited	1999 PTC 294
8	Enfield Bullet	Enfield India Limited	2006 (32) PTC 397
9	Glaxo	Glaxo India Limited	2002 (25) PTC 105
10	Holiday Inn	Holiday Inn Inc.	2002 (25) PTC 308 (DB)
11	Honda	Honda Motor Co. Ltd	2004 (28) PTC 332
12	Horlicks	Horlicks Limited	2003 (26) PTC241
13	Infosys	Inforsys Technologies Ltd	2007 (34) PTC 178
14	Intel	Intel Corporation	2007 (34) PTC 492
15	Nirma	S.K. Patel	2004 (29) PTC 634
16	Pepsi	Pepsi Inc.	2006 (32) PTC 225
17	Philips	Philips NV, Netherlands	AIR 1983 P&H 418
18	TATA	Tata  Chemicals Ltd.	2009 (40) PTC 54
19	TELCO	Tata Engineering & Locaomotive  Co. Ltd.,	2001 PTC 562
20	USHA		2004 (29) PTC 647
21	Vicks Vaporub	Richardson Vicks Inc.	1990 PTC 16
22	Whirlpool	Kirloskar Property Ltd.,	AIR 1996 BOM 149
23	Yahoo	Yahoo Inc.	1999 PTC 201
24	Microsoft	Microsoft Corporation	CS(OS)2063/2010, 03.02.14
25	Nestle	Societe des produits Nestle, USA	CS(OS) 551/2010, dt. 8.3.13

Source: http://164.100.176.38/tmrpublicsearch/wellknownmarks.aspx

The onus is on the proprietor of the Trade mark to establish by evidence that the mark is well-known trade mark.  One way to prove this would be by demonstrating the degree of knowledge or recognition of the mark in the relevant section of the public using evidence of consumer surveys, opinion polls etc.,  Also, awareness of a trade mark in India can be proved by promotion of the mark by advertising in print, electronic media, including internet, exhibitions, seminars etc., 

Famous trade mark

Some jurisdictions treat famous and well-known marks as synonymous. Most jurisdictions, however, distinguish between famous and well-known marks. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. A famous mark often needs to be registered in at least its home country for protection, whereas well-known marks are usually protected without the need for any registration. On the other hand, well-known marks are often protected only for goods and services related to those with which it is already associated, whereas famous marks may be protected from unauthorized use on non-competing goods and services. Thus, it is generally more difficult to prove that a mark is famous as opposed to well-known.

Conclusion

In India, the law provides for added protection to well-known trademarks by comprehensive definition of the expression under Section 2(1) (zg) of the Act and its incorporation into the ‘relative grounds’ for refusal of registration under sections 11(6) to 11(10) of the Act and suitable provisions in Section 29, with a view to prevent infringement of well known trade marks.  The law expects the trade mark proprietors to be more careful about similar marks in existence, even beyond the national boundaries, as the ever evolving legal paradigm manifests that trans-border reputation has also got a firm stronghold in the intellectual property domain in India.