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WELL KNOWN TRADE MARK

Corporate Laws / Banking / SEBI / LLP - By: - Mr. M. GOVINDARAJAN - Dated:- 17-7-2015 Last Replied Date:- 18-7-2015 - 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 se .....

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s 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 m .....

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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 agai .....

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ld 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 .....

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otection 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 Aspec .....

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vember 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 .....

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ct 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 .....

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ch 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 Stat .....

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egistration 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 com .....

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s 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 .....

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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-k .....

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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 .....

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rade 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 applie .....

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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 ha .....

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; 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 t .....

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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 trad .....

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n 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 Vick .....

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