WELL KNOWN TRADEMARKS
In a consumer driven society, trademarks play a very important role for identifying goods and services provided by one person from those of another. Trademarks of well known brands also serve to guarantee quality with respect to goods and service. Businesses accordingly are forced to retain accountability for the quality of their goods & services circulating in the market thereby protecting consumers. As a result of long and extensive use, trademarks create and increase goodwill for businesses. Once a goodwill is established in the market, a positive image is created in the mind of consumers about specific goods and services. As a result businesses market shares can increase on account of increasing demand of such goods and services. Further, with the emergence of copious social media platforms like Instagram, Whatsapp, Facebook, Youtube etc. and innovative advertisement ideas, the outstretch of brands to the consumers have increased tremendously that lead them to be a loyal customer. Well- known marks are defined under section 2(ii)(zg) of the Indian Trademarks Act, 1999.A Well Known trademark usually refers to a mark which becomes popular and well known among substantial segment of public on account of extensive and continuous use. Relevant standards that are applicable universally and taken into consideration to determine whether a mark is well known or not include the degree of knowledge or recognition of the mark in relevant sector of public. Another point to keep in mind about well known trademarks is their wide recognition among traders in the industry. Some examples of well known trademarks in India include- BAJAJ, BATA, BISLERI, WHIRLPOOL, HONDA, MAHINDRA, NIVEA, NIRMA, PEPSI, PHILIPS, REVLON, RED BULL, NESTLE, AMUL, GOOGLE, SONY, GODREJ etc. In the era of cut- throat global market competition, getting a tag of “Well- Known Trademark” would be like attaining salvation for trademark owners as the tag of well-known trademark aids to identify a sign or symbol for a specific brand in the global markets and enjoys a fairly high reputation. The motive behind to establish the brand name as well- known trademark is not only to protect the brand name from malevolent infringers but also to forbid the deliberate opportunist person from copying the trademark in respect of their product and services. The recognition of a well-known trademark is not from the date of application but according to the applicant, it is the date from which designation/trademark became widely known.
In order for raw materials, semi-processed products, components, etc. to be determined as being well-known, what is of consideration is if they are well-known to professional traders and consumers of such products. On the other hand, in order for finished products relating to clothing, food or housing to be determined as being well-known, they must be well-known to end consumers along with others in the chain. In respect to trademarks pertaining to services, the scope required to be determined as being well-known depends on the actual status transactions. Knowledgentia Consultants which is the best trademark and brand registration firm in India provides global IPR protection services for searching, filing, registering and enforcement of trademarks.
EVOLUTION OF WELL- KNOWN TRADEMARKS
The expression “well known trademark” was first coined in the Paris Convention for Protection of Industrial Property in the year 1883 under Article 6bis. The Paris Convention in Article 6bis set worth the general principal of territorial with respect to the protection of trademark which is that a trademark registration in one country does not provide the exclusive ownership of the same trademark in other nations. In essence, the territoriality principle is the idea that ownership of a trademark in one country does not confer to the owner the right to the use and protection of the mark in another country. Later, the term well- known trademark was discussed in Trade- Related Aspects of Intellectual Property Rights in the year 1995, where the criteria to safeguard and imposition of the well- known trademark was set up under Article 16(2) and Article 16(3) of the agreement. India along with other member countries signatory to the TRIPS agreement were bound to protect the popular trademarks of the similar or dissimilar marks. At present, almost every country has its own rules and regulation for “Well- Known Trademarks”.
GUIDELINES FOR DETERMINATION OF WELL KNOWN TRADEMARK AS PER PREVAILING INTERNATIONAL AND DOMESTIC LAWS
- A trademark actually in use and goods or services for which it is used
- The start of its use, the length of its use, or the area where it is used
- The volume of production, certification or delivery and a scale of business
- The method, frequency and contents of advertising
- The number of times of appearance in general newspapers, trade journals, magazines and the internet, and contents thereof
- Consumers’ awareness of the trademark in the market
DECLARATION OF MARK AS WELL KNOWN TRADEMARK IN INDIA
Trademark Rules 2017, govern the provisions regarding declaration of any trademark as well known in India. According to Rule 124, any person can file an application in form TM-M along with a prescribed fee. Official filing fee for one mark is Rs. 1,00,000. The application has to be supported by a statement and supporting documents. Registrar while examining the application specifically checks regarding knowledge and recognition among relevant section of public, geographical extent, length of time, number of actual users and any specific rulings. Registrar also invited objection from the public during the process.
As per public notice issued in the year 2017, the application for well known trademark must be accompanied with following documents :-
- Statement of a case describing applicant’s rights in the mark and substantiating his claim that the mark is well known
- Evidence as to use of mark, application for registrations, annual sales turnover, number of actual users, evidence regarding publicity and advertisement, expenses
- Details of recognition of the mark by any court or tribunal
- Copy of judgment determining trademark as well known
IMPORTANT JUDICIAL PRONOUNCEMENTS-
- DAIMLER BENZ AKTIENGESELLSCHAFT & ANR V. HYBO HINDUSTAN AIR 1994 DEL 2369
In this case, the Plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark BENZ for selling its undergarments. The Court in deciding the case, observed and made a statement regarding plaintiff’s logo as a well-known trademark and hence restrained the Defendant from using the mark.
- ROLEX SA V ALEX JEWELLERY PVT. LTD. & ORS 2009 (41) PTC 284 (DEL.)
In this case, a suit was filed against the defendants who were dealing with artificial jewellery, and using the trade name “Rolex”. The court held that the plaintiff’s trade mark was a well-known trademark since the general public using watches recognize the trade name Rolex and the defendant using the same name for dealing with artificial jewellery would create confusion in the minds of the general public . Hence, injunction was granted against the use of the trade name Rolex by the defendants.
- MICROSOFT CORPORATION V KURAPATI VENKATA JAGDEESH BABU, 2014 (57) PTC
The Delhi High Court ruled that the mark MICROSOFT was a well-known mark on account of extensive use and extensive evidence in relation to advertising and publicity for the mark in India.
- ITC LTD VS BRIATANNIA INDUSTRIES, CS (COMM) 1128/2016
In this case, it was held that to become well known a trademark should not necessarily be in the market for a certain number of years. Hence to acquire the status of well- known term of use should not be a major deciding factor.
- TOYOTA JIDUSHA KABUSHIKI KAISHA V PRIUS AUTO INDUSTRIES AIR 2018 SC 167
In this case, it was held that that, the reputation and goodwill of the product in the local market, which is a product of advertisement and promotion, ought to be considered.
With the tremendous rise in worldwide recognition of trademarks, service marks as well as domain names has enhanced the demand for their protection. The advent of TRIPS agreement in 1995 made mandatory for all WTO members to include protection of well- known marks across trans- border areas. TRIPS is considered as one of the most comprehensive global agreement on IP rights ever implemented and it covers almost every area from copyright, patent, industrial design and trademark laws. It is evident that today in 21st century, proprietors of globally renowned brands are able to expand their business overseas due to the protection assured by TRIPS. A small segment of the agreement included Paris Convention rules on protection of well- known marks making it obligatory for the signatory members of the convention to implement laws on protection of well- known trademarks. The Trademarks Act, 1999 and Trademark Rules, 2017 deals with the regulation of trademarks registered in India or having a cross border reputation. The decision of Indian courts has evolved developing principals for the protection of multinational brands. Hence, more awareness shall be created amongst the proprietors for the protection of both trademark and well- known trademarks as a result to safegaurd the consumers of goods or service to fall into the trap of confusion or deception of purchasing inferior quality products of a well- known trademark. Knowledgentia Consultants has earned a name as one of the most client focused firm in India providing best trademark and brand registration services in India. We are you one-stop solution for all kinds of legal, compliance and supplemental trademark matters. In case of any query regarding this matter you may email us at firstname.lastname@example.org or visit our website -https://knowledgentia.com/.