Provisions of The Indian Trademark Act, 1999 which relate to Well-Known Trademarks are as follows:
Section 2(z)(g) defines the term ‘well-known trademark’ as under:
This is a tabin 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.
Section 29 (4) -- A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which–
a) Is identical with or similar to the registered trademark; and
b) Is used in relation to goods or services which are not similar to those for which the trademark is registered; and
c) The registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.
Section 11 of the Act deals with relative grounds for refusal of registration; sub sections (6) and (7) of Section 11 are relevant with regard to well-known trademarks and they state as under:
11(6)- The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including -
i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;
ii) the duration, extent and geographical area of any use of that trademark;
iii) 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;
iv) the duration and geographical area of any registration of or any publication for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark;
v) 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.
11(7) The Registrar shall, while determining as to whether a trademark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account -
i) the number of actual or potential consumers of the goods or services;
ii) the number of persons involved in the channels of distribution of the goods or services;
iii) the business circles dealing with the goods or services, to which that trademark applies.
Where a trademark 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 trademark as a well-known trademark for registration under this Act.
In addition to the above and on the basis of judgements passed in this regard, there are several factors that are not to be taken into consideration by the Registrar in determining whether a mark is a well-known mark or not. These are as follows:-
1. The trademark has been used in India,
2. The trademark has been registered,
3. The application for registration of the trademark has been filed in India,
4. The trademark is well-known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
5. The trademark is well-known to the public at large in India.
Section 11(10) deals with various aspects in relation to the protection of well-known trademarks. It states: While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall-
i) Protect a well-known trademark against the identical or similar trademarks;
ii) Take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.
However, if a trademark has been registered in good faith disclosing the material information to the Registrar of where right to a trademark has been acquired through use in good faith before the commencement of the Trademarks Act, 1999, then the validity of the registration of the trademark or right to the use of that trademark will not be prejudiced on the ground that such mark is identical or similar to a well-known trademark.
Primary Requisites of a Well-Known Trademark:
- Products/ services avails extensive use of Trademark
- Solitary user of the trademark on the said products/services
- Substantial sale of products/services
- Goods must be distinctive
- Comprehensive publicity through mass media
- Consumers must identify with the products
- Wide geographical extent of use of products/services
Secondary Requisites of a Well-Known Trademark:
- Due diligence on part of owner
- No ambiguity as to ownership of the Trademark
- Pronouncement of the trademark by a Competent Court or a Trademark Authority as a well-known trademark (in ratio decidendi or obiter dicta)
- Implicit recognition of the mark by competitors
- Encompassing sale of goods in another country as well
- Considerable knowledge of the trademark in cyberspace
Landmark Judgments by Indian Courts recognizing and elaborating on the concept of Well-known trademarks:
- Daimler Benz Vs. Hybo Hindustan: The Delhi High Court declared “Benz” as a well-known trademark and passed an injunction order restraining the defendant from using the mark “Benz” in respect of undergarments
- Tata Sons Ltd. Vs Manoj Dodia and Others:The Delhi High Court declared “Tata” as a well-known trademark and passed an injunction order restraining the defendant from using the mark “Tata” in respect of weighing machines. The Defendant was also ordered to pay Damages worth INR 200,000 to Tata Sons.
- Disney Enterprises, Inc Vs. Gurmeet Singh & Others:The Delhi High Court ruled in favour of the Plaintiff trademark and stated that the trademark “WALT DISNEY“ and the various Disney Characters have acquired a tremendous reputation and goodwill throughout world including in India and hence unauthorized use of such characters in relation to any items of merchandise would create a high degree of confusion and deception resulting in passing off.