Well-Known Trademarks

• Introduction

Well-known trademarks are those marks that can be easily distinguished from other brands. The general public can easily recognize these marks and associate them with the goods and services dealt with by them. Mega brands like Google, L’Oréal, McDonalds, Fendi are some of the famous trademarks which have a reputation of their own and can be easily differentiated from other marks.

The definitions and interpretation clause of the Trademark Act, 1999 defines “well-known trademark” in Section 2 (zg). Accordingly, a well-known trademark is a mark that can be distinguished from other marks. People associate the mark with certain goods and services, and if the same mark is used for other goods and services, people would tend to associate it with to the same well-known mark. For example, Cadbury as a brand is well-known for its business in the confectionery market but if a saloon with Cadbury as their brand name opens stores, people would associate the confectionary Cadbury with the saloon.

Certain marks would be refused registration due to their similarity with the well-known marks as under Section 11 (2) (b) of the Trademark Act. Even if the registration is sought for a different class of goods or services, it would be rejected if it is similar to any well-known mark. The reasoning being that such registrations would give an unfair advantage or be detrimental to the distinctive character or repute of the well-known trademark.

• How is a mark recognized as a “well-known mark?

Section 11(6) lays down the factors to be taken into consideration when granting the tag of a well-known mark. The factors are:

1. Knowledge and recognition of the trademark in India and in cross-borders;

2. The duration, extent and geographical area of use of the mark;

3. The promotion, publicity and advertisement of that trademark;

4. The application for registration of the trademark in India which reflects the use or recognition of that mark;

5. Any favorable ruling against the mark in use in India.

Section 11(7) establishes certain grounds for the Registrar to take action under clause 6. The grounds are:-

1. The number of consumers availing the goods and services;

2. The size of the channels of distribution of such goods and services;

3. The business circles dealing with goods and services.

Section 11(8) provides that the Registrar shall consider a trademark as a well-known mark if any Court or Registrar has sound reason with evidentiary support to recognize the mark as a well-known mark.

Section 11(9) lays down the grounds to be not considered by the Registrar in determining whether or not a trademark is a well-known mark, which are as follows:

a. the use of trademark in India;

b. that the mark is registered;

c. that the application for registration of trademark has been filed in India;

d. that the trademark-

i. is well-known; or

ii. has been registered in; or

iii. in respect of which an application for registration has been filed in, any country other than India; or

e. that the trademark is well-known to the public at large in India.

Section 11(10) entrusts the Registrar with the responsibility of rejecting any identical to the well-known trademark, in the interests of protection of rights of the well-known trademark holder.

Section 11(11) provides that those trademarks which have been registered in good faith or acquired through use in good faith, even if identical to the well-known trademark, then in such case the trademarks in good faith would be held valid.

• Procedure for declaration of a mark as ‘well-known’

The Trademark Rules (2017) in Section 124 lays down a new procedure for declaration of mark to be a well-known trademark by the Registrar of Trademarks. Prior to this, only courts could recognize a mark to be a well-known mark. But as per this provision, any owner of a trademark can approach the Registrar with requisite evidence to declare their trademark as a well-known trademark. Then it is upon the sound discretion of the Registrar to determine the mark to be a well-known trademark. The owner has to make a standard fee of Rs. 1, 00, 000 as is mentioned in Entry 18 of Schedule 1.[i] The Registrar shall publish the list of well-known trademarks and maintain it in the Trademark Journal. [ii] The provision also empowers him to remove certain trademarks that have been erroneously or inadvertently included in the list of well-known trademarks.

• Conclusion

Well-known trademarks enjoy international and cross-border reputation and hence receive protection from infringers and mala fide users in all the countries. They are known for their distinctive character which has been developed over a long period of market presence. Their geographical presence in multiple countries backed by a large consumer base helps them acquire the tag of a well-known brand. A combination of these factors and statutory protection granted by the Act ensures that the reputation of a well-known trademark is guarded from infringers.

[i] https://www.ipindia.gov.in/TM-Rules-2017.htm.

[ii]https://ipindia.gov.in/writereaddata/Portal/Images/pdf/well-known-trademaks-updated-newone.pdf.