Zatapult
The concept of a well-known trademark has come into play from as early as in the 1870s. The Bass red triangle, which was registered by the Bass Brewery in the United Kingdom in 1876, is frequently cited as the first well-known trademark.
In the Indian context, “Bisleri” is the first well-known trademark in the Indian market and one of the first marks introduced for bottled mineral water. Since then, there has been a rapid evolution in the landscape of trademarks and the ambit keeps expanding day by day.
In this guide, we will learn everything about well known trademarks in India, what are the features and advantages, criteria for becoming a well known trademark and finally the steps to register a well known trademark in India.
What is a well-known trademark?
A well-known trademark is a mark (such as a brand name, logo, or slogan) that is widely recognized and known to a significant portion of the public, regardless of whether there are customers of the goods or services associated with that mark. Well-known trademarks usually have a strong reputation and are easily recognizable because of factors like their continued use, extensive advertising, international reach, and market presence.
Well-known trademarks in India
As per Section 2(zg) of the Act, a well-known trademark is defined as:
“in relation to any goods or services, means an 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.”
In short, well-known marks have extra protection under the law and are given additional safeguards by courts against trademarks infringements and passing off.
Well-known trademarks enjoy protection across the nation and in several categories of goods and services. However, trademarks other than those that are well-known are only protected with respect to certain goods and services.
One of the key features of a well-known trademark is that it prohibits marks that are deceptively similar to or identical to the well-known mark. For example, only the owner of Kaira District Cooperative Milk Producers is permitted to register and enforce the name “Amul” for any class of products or services because it is recognized as a well-known trademark.
Key features and advantages of a well-known trademark
Extensive Use and Recognition
The well-known trademark must be widely known in India through extensive use and significant recognition among the target audience. This could have been achieved by campaigning, advertisements, celebrity endorsements and so on.
International Reputation
A well-known trademark enjoys recognition in India as well as on an international frontier.
Protection across the NICE Classes
The NICE classification is managed by the World Intellectual Property Organization (WIPO), and it is widely adopted by many countries as the basis for categorizing goods and services into classes for trademark applications.
In India, well-known trademarks are protected beyond the particular classes for which they are registered. This protection covers both similar and dissimilar goods and services.
Prevention from dilution
Even in the case that another trademark which is similar or identical to the well-known trademark prevails in another class than the well-known trademark, the owner has the right to prevent the other user from using that conflicting trademark which would amount to dilution of the well-known trademark’s distinctiveness.
Protection against unauthorized registration
The owner of a well-known trademark has the right to oppose the registration of a mark that is identical to or similar to it. This is done in order to stop unauthorized use of a mark by third parties that could harm the well-known mark’s uniqueness and well-known character.
Recognition by the Registrar
The Registrar of Trademarks in India may, either on an application by the rights holder or suo motu, declare a trademark as well-known based on evidence and documentation provided.
Criteria for being a well-known trademark in India
The following criteria are listed in Clause 6 of Section 11 for determining a trademark to be well-known:
- Knowledge and awareness about the trade name or mark in significant sections of the public.
- Geographical location, duration and extent to which a trademark is used.
- Geographical location, duration and extent to which a trademark is being promoted in confirmation with goods and services applied for.
- Registration or request for registration of the trademark to the scope they reflect either the utilization or recognition of the mark.
- The record of compliance with the rights of that mark, specifically, the scope of the trademark’s recognition as well-known by some court or any registrar under the record.
Certain irrelevant factors vis-à-vis obtaining the status of a well-known Trademark in India are-
- Whether the Trademark is registered in India;
- Whether the trademark has been used in India;
- Whether the request of registration for a trademark is filed or applied for in India and
- Whether the mark in question is well-known or registered in any other sovereignty other than India.
In short, whether a trademark has been registered in India or has been used in India will not affect the procedure for the trademark to obtain the status of a well-known trademark in India.
Caselaw
The famous case of Kamal Trading Company v. Gillette UK Limited involved the defendants using the mark 7’O Clock to identify their toothbrush product. The court declared that because the complainant had consistently and widely used the well-known mark 7’O Clock, they had gained not just a reputation in India, but also across the globe. The consumers will be misled and confused if the defendant adopts a mark that is similar. Therefore, the defendant was prohibited from using the said mark.
As a result, it can be understood that the well-known trademark enjoys certain privileges because of its distinctiveness in the market and among the consumers.
In the landmark case of N.R. Dongre And Ors vs Whirlpool Corporation And Anr, the court granted the relief of an injunction. In this instance, Whirlpool’s trademark was not registered in India. But the plaintiff had goodwill and a reputation abroad, and they used to trade their goods at the US embassy in India. The plea of the plaintiff was that the defendant commenced using the mark Whirlpool on their washing machines. The court noted that that Whirlpool Co. had established a trans-border reputation in India and that the defendants were thus not allowed to use it in connection with their goods and services.
This example is a testimony to the facts that a well-known trademark not only enjoys protection in India, but also beyond the borders and it does not matter in the case of a well-known trademark whether it was registered or not.
Steps to obtain the status of a Well-known Trademark in India
Traditionally, a civil court or tribunal only could declare a mark to be well-known in cases concerning trademark infringement and passing off, under the trademark law.
As per the present law, the owner of a well-known mark can make an application before the Trade Marks Registry for having their mark determined as a well-known trademark. The Applicant has to file form TM-M, along with the official fee and supporting documents, which are to be filed online mandatorily along with the application.
The documents required for are as follows:
Statement of the case
This outlines the applicant’s rights to the trademark and supports their claim that it is a well-known trademark.
Evidence
Evidence in support of the applicant’s rights and claim, including documentation of trademark use, completed and approved registration applications, the applicant’s business’s annual sales turnover based on the subject trademark, duly corroborated data regarding the number of actual or prospective customers for goods or services sold under the said trademark, documentation of the costs associated with publicity and advertisement of the said trademark, and proof of trademark knowledge or recognition among relevant Indian and international public audiences.
The document that is presented with the case statement as supporting documentation or evidence must be in PDF format and be no larger than 10 MB overall, with a resolution of 200 x 100 dpi on A4-sized paper.
In order to obtain the status of a well-known trademark, one must ensure that there has been a significant impact of that trademark in the public domain. For the same, the user should start well in advance to collect newspaper articles, profit statistics, CSR activity reports, media reports to establish sufficient evidence supporting the application for a well-known trademark.
Details of successful enforcement of rights-
Details about the successful enforcement of any rights, if any, related to the aforementioned trademark, including the extent to which the trademark is recognized as a well-known trademark by the Registrar of Trademarks or any Indian court; a copy of any judgment rendered by the Registrar of Trademarks or any Indian court, if any, determining the trademark’s status as a well-known trademark.
Any mark which gets determined as well-known, either by a court of competent jurisdiction or the Trade Marks Registry gets included in the list of well-known marks maintained by the Registry. The same is available at: https://ipindiaservices.gov.in/tmrpublicsearch/wellknownmarks.aspx.
Conclusion
To sum up, a well-known trademark enjoys certain privileges because of its extensive use and reputation. A well-known trademark will not only fetch the user protection where it was registered, but will also grant legal protection beyond the national borders. A trademark will be declared as a well-known trademark on the basis of its impact on the market and consumers.
The protection of well-known trademarks are essential to the business sector because they represent not only goods and services but also a long tradition of trustworthiness, quality, and customer loyalty.
Article contributed by Ms. Eesha Parande.