Protection of Well-Known Trademarks: Developments in India and the UK

Background/Introduction

The Trademarks Act, 1999, defines well-known trademark 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.' Well-known trademarks are protected across the nation and across categories of goods and services, which make them different from other trademarks whose goodwill and recognition is restricted. They can be protected, irrespective of whether they are registered or not, with regard to the goods and services which are similar to and for whom they have gained reputation.

Example of protection of a well-known trademark: Rolex Sa v/s Alex Jewellery Pvt. Ltd.

Rolex, incorporated in Switzerland was a manufacturer and distributor of premium watches. It filed a case against Alex Jewellery for manufacturing and selling artificial jewelry in Mumbai under the mark of Rolex. Further, the defendant owned a website named www.rolexjewelleryhouse.com.

Decision: The Court held that Rolex, being registered in 140 districts and having a reputation in India was indeed a well-known trademark. Therefore, the defendant was restrained under Section 29(4)(c) of the Trademarks Act from using the Rolex trademark in any way and was ordered to pull the website down.

Overview of the Problem

The Indian trademark law protects trademarks that are well-known. Indian intellectual property (IP) offices recognise well-known trademarks in India with regard to their national and international reputation. Section 2(1)(zg) states that “Well-known trademark is a mark which has become well known to the section of the public which uses such goods and services and use of that mark in relation to goods and services of other business would be considered as infringement as customers using the product would think that the goods and services given are in relation to the well- known brand.”

Well-known trademarks are of significant importance because they offer huge commercial value for whoever owns them. They can be called as an untapped asset of the company to which they belong. Infringement of the trademark refers to the unauthorised use of such mark. This creates a confusion among consumers about the quality, quantity and other factors of the product and damages the reputation of the brand. Hence, imitation of a well-known trademark is punishable under the law. For example, if a cola company uses a well-known trademark (say Thumsup) of which the company is not the original owner, then it is a case of trademark infringement and the company is liable to get sued in Court based on it.Although, registration is not a mandatory requirement for a well-known trademark, it is beneficial for the company to do so in order to protect the goodwill and reputation of the company.

The Trade Marks Acts of 1994 governs trademarks within the United Kingdom and the Isle of Man. It has come to replace the old Act which was passed in 1938. Section 56 of this Act talks about the well-known trademarks. It can be applicable to all marks which are known in UK, irrespective of whether the brand owner carries on business, or has goodwill there. The only condition for the mark to be a well-known mark is that “the brand owner should be a national of, be domiciled or have a real and effective industrial/commercial establishment in a country that is signatory to the Paris convention.”

Arguments or Main discussion related to identified issues

A well-known trademark was legally defined for the first time in Paris Convention of Industrial Property in 1883. The Paris Convention laid out the fundamental principle that would grant special protection to well-known trademarks but no procedure was laid down and therefore every country could come up with their own procedures for protecting a well-known trademark.

Countries around the world have laid down rules to protect unregistered well-known trademarks in accordance to their international obligations under the Paris Convention for the Protection of Industrial Property and the TRIPS agreement. Article 16.3 of the TRIPS agreement provides protection to ‘registered well-known trademarks’ if they satisfy the following conditions:

• That the goods and services for which the other mark is used or is seeking protection are not identical or similar to goods for which the well-known trademark has required 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.

Developments in India:

Trademark act of 1999:

The Trade Marks Act has laid out the basic requirements to classify a mark as a well-known trademark. The related provisions have been mentioned in sub-sections 6 to 9 of Section 11 of the Act. The Act says that, while determining a mark as a well-known trademark, the Trade Marks Registrar has to consider the following factors:

• (a) the knowledge or recognition of the trademark in the relevant section of the public, including knowledge in India of the mark;
• (b) the duration, ex,tent and geographical area of any use of such trademark;
• (c) the duration, ,extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies
• (d) the duration and geographical area of any registration of or any application for registration of that trademark under the Act to the extent they reflect the use or recognition of the trademark;
• (e) the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well-known trademark by any court or Registrar under that record.

While determining the relevant section of the public, the Registrar has to take into account

1. the number of actual or potential consumers of the goods or services;
2. the number of persons involved in the distribution of the goods or services; and
3. the business circles dealing with the goods or services, to which that trademark applies.

Therefore, the law implies that if a trademark has already been determined as well-known in at least one relevant sections of the public in India by any court or the Tribunal, it is binding to the Registrar of Trade Marks to consider it well-known for its registration in India.

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Duration of use: The law does not provide for any distinct method to determine the duration of use. However, the legal principle regarding it has been laid down by precedents like the ITC v/s Britannia Industries case where it was specified that “to acquire secondary meaning it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight,” therefore automatically making it eligible for well-known status.

Documents required for filing an application:

• Statement of case – which has the claimant's right on the trademark and describes the claim of trademark to be a well-known trademark.
• Details of successful enforcement of rights if the trademark has been recognised as well-known by the court in India or TM Registrar.
• Copy of judgment of any court or the Registrar where the trademark has been recognised as well-known.
• Evidences showing the claimant's right and justifying his claim. Such evidences shall include data/documents showing-
• Use of trademark or any application filed for registration of trademark, or registration obtained.
• Annual turnover/ net profit of the claimant’s business.
• Actual or potential number of customers who fall/can fall under the said trademark.
• Publicity and advertisement of the said trademark along with the expenses incurred for it.
• Knowledge or recognition of the trademark in relevant sections of public across the globe.

Trademark Rules 2017

The recently enacted Trade Marks Rules of 2017 has eased the process of registering a mark as well-known, without going through the time-intensive procedures and expensive litigation proceedings, in a court of law in India.

Procedure: Rule 124 says that “any person may apply to the Registrar on the prescribed Form TM – M along with the prescribed fees of Indian rupees 100,000 for recognition of a mark as well-known.”

1. The application has to be submitted along with a “statement of case” which has to contain sufficient evidence and facts which prove the claims of the applicant to be true.
2. The Registrar will then review the submitted application to determine the eligibility of the applicant’s request on the basis of the provisions contained in sub-sections 6 to 9 of Section 11 of the Indian Trade Marks Act, 1999.
3. Further, the Registrar while processing the application can ask for any other supporting document, he thinks is appropriate for the cause.
4. Before detrademarka trade mark as well-known, the Registrar can give out a notice to invite objections from the general public. Any person who has any objection to the mark has to file a written objection to the Registrar within thirty days of the date of the Registrar’s invitation. If it is given that that there is no objection from the public or any unsustainable objection has been rejected, the mark will be identified and declared as well-known by the Registrar.
5. To inform the public of the inclusion of the mark as well-known, the mark has to be published in the Trade Marks Journal. The mark will also be included in the database of well-known trademarks, which is usually maintained by the Registrar.

• http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf

Case on Trademark Infringement in Indian court: Kamal Trading Co. v/s Gillette UK Limited

In this case Gillette registered a case against the defendant who was using the mark of 7 O’ clock on their toothbrushes, which was known across the world as Gillette’s identity. The Mumbai High Court ruled that this mark was indeed a well-known trademark which was used extensively by Gillette in its shaving creams, razors, etc. The use of such mark by the defendant could lead to potential deception of the customer. Therefore, the court ruled in favour of Gillette while the defendant was asked to stop using the mark with immediate effect.

Developments in UK:

The Trademark Act of 1994 and subsequent EU Directive 2015/2436/EC and the EU Community Trademark Regulation (207/2009) have created several provisions in the UK wherein well-known trademarks could get the protection that they ought to. However, the conditions under which such classification may be done remain uncertain. This can be explained by the fact that if a mark is well known in at least one relevant sector of the public in a member state, it “shall” be considered to be a well-known mark by the member state. This kind of legislation leaves enough space for different interpretations and it is up to the discretion of the concerned authorities to decide about the status of such marks.

The subsequent ruling of The EU Intellectual Property Office (EUIPO) says that, even though the terms ‘well known’ and ‘reputation’ denote distinct legal concepts, the criteria for determining whether a trade mark is well known or enjoys reputation will usually be the same.

This can be further illustrated by the case of General Motors Corp v. Yplon SA Case where, the plaintiff, GMC, was the registered proprietor of the mark CHEVY in respect of motor vehicles amongst other things and used the mark generally in Belgium to designate vans and similar vehicles. The defendant, Yplon had registrations and used the same mark in relation to detergents, deodorants and various cleaning products. This case further underlined the meaning of ‘reputation’. It is given as follows- “If a reasonable buyer is not at all likely to think of the senior user’s trademark in his or her own mind, even subtly or subliminally, then there can be no dilution. That is, how can there be any whittling away if the buyer, upon seeing defendant’s mark, would never, even unconsciously, think of the plaintiff’s mark? So, the dilution theory presumes some kind of mental association in the reasonable buyer’s mind between the two parties and the mark.

Critical Analysis of law/regulation/case laws

Infringement of trademark falls under the purview of anti-competitive practices. Such practices can come in the way of consumer welfare, innovation and equal market access. Therefore, the focus should be on how to curb these kinds of practices to promote fair competition among stakeholders. In such a scenario, protecting well-known trademarks can be viewed as an instrumental tool of economic policy to allow all kinds of companies to sustain themselves in global markets. When trademarks are protected, they can lead to the establishment of brand equity and identity as well as a source of instant recognition. The laws which were implemented before the 21st century were pioneers in their own right, as they provided the starting point for the recognition and proper utilisation of well-known trademarks across nations. However, they were quite fundamental in nature as many firms found loopholes in these laws and engaged themselves in infringement. This was the case in underdeveloped and developing countries, where it was much easier to bypass regulations. However, in the recent times with the increase in globalisation and competition, all countries have taken special measures to ensure that these kinds of practices are restricted. Easy legislation of well-known trademarks in India, according to the 2017 law is an example of such developments.

Suggestions for identified issues

1. The Internet boom of recent times, coupled with the diminishing of international boundaries and universal access has made well-known trademarks more susceptible to infringement. In the Kabushiki Kaisha Toshiba case, the Court judged that well-known trademarks need to be protected not only in the country where they are registered but also everywhere else where they are widely known to a relevant section of the public. In this way, the owners of well-known trademarks will be incentivized to expand their business activities under those marks to other jurisdictions as well.
2. The main issue regarding well-known trademarks is that their recognition, to a large extent is up to the discretion of the competent authority, in most cases the Registrar of the country/state where the company is seeking a trademark. This leads to subjectivity in determining the status of such marks. This kind of problem can be eliminated by maintaining a proper journal where all kinds of registered/well-known trademarks can be listed. Such registers do exist in India as of now.

Conclusion

In case of infringement of trademarks, the following remedies are available-

• Prevent registration of deceptive or similar trademark in any related/ unrelated business
• Requesting removal of infringing trademark
• Prevent incorporation of trademark
• Ask for punitive damages in the court of law

Till the present day, about 100 trademarks have been identified as well known by the Indian court. This number is expected to rise very soon as more companies are becoming aware about the importance of registering their trademarks. Recent changes in the existing laws has made the situation more favourable for businesses.