The guidelines for determining whether a trademark should be granted the status of a well-known mark were set out by the Delhi High Court in the case of Toshiba Corp. V. Mr. S.K. Sil in the year 2011.

Toshiba Corporation filed a suit for restraining the defendants from offering lifts and escalators under the name ‘Toshiba India Elevator and Escalator Industries’.

The plaintiff is the owner of the mark “TOSHIBA” and is a globally recognized company dealing in advanced electronic and electrical products. The plaintiff claimed to have adopted the mark “Toshiba” in the year 1939.

Points of Contention:

It was contended by the plaintiff that on account of use of the name “TOSHIBA” on business documents, such as letter heads, business cards and brochures coupled with the use of the domain name www. toshibaelevator .com by the defendants, a person coming across the products of the defendants would be misled to believe that the products being offered by defendants are products of the plaintiff. The plaintiff further contended that a consumer would be led to presume that either the products which were being offered by the defendants were manufactured/imported by the plaintiff or were manufactured under a licence from the plaintiff. Hence the defendants were guilty of passing off their products to the customers as genuine “TOSHIBA” products, thereby taking undue advantage of the reputation and goodwill associated with the plaintiff’s trademark ‘TOSHIBA”. The plaintiff argued that if the quality of the elevators and escalators sold by the defendants was substandard, it would affect the reputation and brand equity of the mark “TOSHIBA”. This would in turn adversely affect the business of the Plaintiff, besides eroding the credibility, reputation and distinctiveness associated with the trademark “TOSHIBA”.

Observations:

The Hon’ble Delhi High Court listed out the following factors that are crucial in determining whether a mark is well-known or not:

(i) the extent of knowledge of the mark to, and its recognition by the relevant public;

(ii) the duration of the use of the mark;

(iii) the extent of the products and services in relation to which the mark is being used;

(iv) the method, frequency, extent and duration of advertising and promotion of the mark;

(v) the geographical extent of the trading area in which the mark is used;

(vi) the state of registration of the mark;

(vii) the volume of business of the goods or services sold under that mark;

(viii) the nature and extent of the use of same or similar mark by other parties;

(ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and

(x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well-known in one country is not necessarily determinative of its being well-known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction. ”

(ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and

(x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well-known in one country is not necessarily determinative of its being well-known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction.”

The Hon’ble High Court relied on the vast sales and revenues generated by the plaintiff worldwide and also observed that the plaintiff held as many as thirty registrations of the mark “TOSHIBA” in India in various classes. The Hon’ble Court also relied on a prior decision of the Supreme Court where the Supreme Court noted the innovations that the plaintiff is credited with and the volume of worldwide sale and its position as being amongst the global top 500 companies identified by Fortune Magazine in 2010.

The Court opined “The owner of a well-known mark is entitled in law to seek injunction against use of that mark irrespective of whether the use is in relation to identical or similar goods or services or is in relation to other categories of goods or services. He may also prevent others from using the well-known trademark as a part of their corporate name/business name.”

Held:

The Court held that the defendants infringed the registered trademark 'TOSHIBA' of the plaintiff by using it for selling and promoting elevators and escalators, using it on their letterheads/business cards, as part of their corporate name and by using the domain name www. toshibaelevators .com.

Further, the Hon’ble Court, while declaring the mark “TOSHIBA” as a well-known mark, observed “Considering, (i) the duration for which the trademark TOSHIBA has been used by the Plaintiff, (ii) the geographical extent of trading area in which this mark is being used, (iii) the volume of business being carried by the Plaintiff using the mark TOSHIBA on its goods, (iv) the extent of knowledge of the mark TOSHIBA in India, which is evident from the business activities of the company in India and the wide range of the products being sold by it in India under the brand name TOSHIBA, (v) the extensive advertisement and promotion of the brand TOSHIBA throughout the world, including in India the number of registrations which the Plaintiff company holds in a large number of countries, including India in respect of the trademark TOSHIBA and (vi) the number of consumers buying goods being sold under this brand name, I have no hesitation in holding that the TOSHIBA is a well-known brand in India, brand TOSHIBA enjoys a trans-border reputation and has acquired the status of a well-known brand in India.”

The Hon’ble Court directed the defendants to pay INR 500,000 as punitive damages to the plaintiff.