LAW OF WELL-KNOWN MARKS IN INDIA
By Moumita Roy, Associate
With Globalization at high pace, India opened its doors to foreign investors at the end of twentieth century and permitted the use of foreign brand names in India. A number of globally well-established brands started to explore investment options in India. In order to address different infringement issues in this market, they relied on the common law remedy of passing off, as there was no specific provision in the old Trademark Act for the protection of well-known marks.
The set of new Laws to handle well known marks and related issues was enacted in 1999 following the requirement enshrined in General Agreement on Trade and Tariff (GATT). The new Act included that any Trade Mark which is well-known in any part of the world can be registered even if there are no goods in Indian Market.
DEFINITION OF WELL-KNOWN MARK
The term “well-known trade mark” has been defined in the Trade Marks Act, 1999 and refers to a mark which has become so very known 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.
Sec 2(1) (zg) of the Trade Marks Act, 1999, gives the definition of a well-known mark as under:
“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”.
HOW TO DECIDE WHETHER A MARK IS WELL-KNOWN?
In the trademark Act, the definition of well-known mark has been provided. But whether a mark is well-known or not is a factual question? The factors generally considered in determining the well-known criteria of the mark are as follows:
- The number of actual or potential consumers of the goods or services;
- The number of persons involved in the channels of distribution of the goods or services;
- The business circle dealing with those goods or services,
- That the trade mark is well known to the public at large in India.
Notably, there is no provision under the Indian trademark law to seek a declaration from the Trademark Registry that a mark is well known. However, the registry has formed a committee of members who review and update the list of well-known trademarks periodically. Thus, rights holders can bring any court decisions where their marks have been held to be well known to the attention of this committee and present a case for their mark’s inclusion.
TYPES OF PROTECTIONS IF A MARK IS A WELL-KNOWN MARK
In the realm of trademarks, getting a “well-known” status is perhaps akin to attaining “MOKSHA” because the protection of well-known marks transcends the traditional standards and objectives of trademark protection.
The protection of well-known marks acquired a new hue in India. The TM Act contains essentially five provisions referring to well-known marks, namely, Sections 2(1)(zg), 11(2), 11(6), 11(7), and 11(9). Also, under Section 29(4) of the TM Act, dealing with trademark infringement, there is a specific provision to protect registered trademarks that have “a reputation in India” against third-party use in connection with dissimilar goods and services.
Immunities granted to well-known trademarks can be summed up as under:
- The owner of a well-known trademark may prevent others from registering the same as, or similar to, the well-known trademark in identical or similar categories of goods or services. For that it is not important for him to be registered in India.
- The owner of a well-known registered trademark may injunct others from incorporating the well-known trademark in the name of their enterprises;
- The owner of a well-known registered trademark is not restricted by the five-year time limit for bringing cancellation actions against trademarks registered in bad faith, while such five-year time limit applies to ordinary trademarks; and
- In infringement cases, courts or administrative bodies tend to grant larger awards to owners of well-known trademarks, and subject infringers to more severe punishment.
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.
Judicial authorities in India have successfully protected well-known trademarks from infringement and passing off. The trend of court decisions reveals the truth vividly.
In the year 1994, the Delhi High Court applied the concept of dilution when considering use of the BENZ mark. This is the first case where a court took judicial notice of a mark’s reputation without insisting on actual confusion and restrained use of a similar mark.
In the year 1996, the Bombay High Court restrained an Indian company, Kamal Trading Co., from using the mark 7’O CLOCK on toothbrushes. It held that the plaintiff had acquired an extensive reputation all over the world.
In, 1996, an Indian company was injuncted from using the mark Whirlpool for their goods. The Court held that the mark Whirlpool had established a trans-border reputation and is a well-known mark.
Since the Act came into effect in 2003, the protection of well-known marks has raised several issues in India. The list of well-known mark take a shape with the courts realistic decisions like TATA, VOLVO, PepsiCo, Telco, ENFIELD BULLET, KIT KAT, NIVEA, NIRMA and so on.
Judging from court decisions, it would appear that the protection of well-known marks in India is a high balancing act because it involves many competing considerations. Several cases have been decided by various High Courts in India where well-known marks were protected.
DRAFTED AMENDMENT RULE (SEC 127)
To revamp the existing Trademark Rules, 2002, the Department of Industrial Policy & Promotion (DIPP) has proposed a new set of Rules in latest draft of rules issued in 2015. As per the draft Rules, a right holder will be able to make request to the Registrar of Trade Marks to declare a trademark as a “well-known” mark. The request will need to be supported with a statement of case and evidence.
As per the proposed Rule 127 of the Draft Rules, a mark may be determined as a well-known mark and will be included in the list of well-known marks based on the discretion of the Registrar. The Registrar shall also have the power for deciding the criteria to get well-known status of a mark. To be included in the list of well-known mark the applicant has to pay the fee. This list will be maintained by the Registry. The enlisted name can also be removed from the list at the satisfaction of the registrar if the mark has gained the status erroneously or with misrepresentation.
HOW CAN FOREIGN ENTITIES BENEFIT FROM AMENDED RULE?
Recent rulings show that the courts are pragmatic in giving due credence to the international character of trademarks and recognizing their well-known status. The amended rule will add a new dimension to this effort. Renowned brands throughout the world will be attracted to get enlisted in well-known marks and explore the attractive emerging market destination of India. The magnificent protection history will entice the intention of world famous brands of getting protected in Indian market.
Till date, a brand is required to wait for court’s decision where an infringement case is involved and the brand drags the infringing mark to the court. Clarifying the above, it can be interpreted that a well-known brand can get favourism if the applicant moves to a court for infringing marks. However, once the amendment comes into force, the well-known brands will get intrinsic protection of well-known ness.
In its present form, Indian trademark law precisely extends statutory protection to well-known trademarks. After the amendment, there will be a process to claim well-known status as recognition to a well-known brand. The brands will be protected from infringement, dilution, free-riding and tarnishment as a right.
Consequently, the big and renowned brands will be relieved from the complex court proceedings which are truly foreign to them.
The quality consistency will help the brands to earn consumer loyalty on a larger scale in the dynamic Indian market.
Concluding the above discussion, the present set of amended rules will outset a new trend in the Trade Mark terrain in India. It is worth mentioning that the current trade mark laws as well as the common law have shielded the well-known trade marks in India thoroughly. In future, this will grant the owners a legal right to declare their trademarks as well known. This will undoubtedly increase the interest of the foreign investors to protect their well-known marks in India. A reputed mark can be protected comprehensively in India by Indian laws. The big brands can enjoy the freedom of using their well-known trademarks without any apprehension of infringement, tarnishment and dilution controversies. There are high chances of elimination of duplicate or deceptively similar products from the market and markets will be expectedly comprised of original products. Such amendment is Trademark Rules will bring considerable change to the nature of Indian market.