This article on ‘Protection for well-known trademarks in India: safeguard against registrability of identical or similar trademarks‘ is written by Priyal, an intern at Legal Upanishad.
INTRODUCTION
When we talk about the market, there exists no. of well-established companies having business under different industries providing options for goods and services to the consumers. The consumers compare them and decide upon their capability. Every company in the market is identified and is capable of being distinguished from other rival companies. The sign they use for their recognition is called a Trademark. A trademark can be a symbol, word, or, mark which is used to represent a particular business and its products. It establishes goodwill and reputation of the company in the market and the company makes hard investments to maintain such a position.
The article is going to focus on what the law provides to safeguard the registrability of well-known trademarks in India under the Trademark Act, 1999 along with cases.
WHAT ARE WELL-KNOWN TRADEMARKS?
We, as consumers, are aware of so many national and international brands which provide quality products and services and have earned a reputation in the Indian market. For example, NIKE, a footwear brand has loyal customers; W, a clothing brand providing expensive goods, etc. In short, the marks used by these companies for the advertisement of their brands are known as Well-Known Trademarks.
The law defines it as “marks which are substantial to a particular part of the public using such goods and services from those companies. The use of that mark while using other goods and services would also be taken as connection with a company that renders such goods and services”. For example APPLE, COCA-COLA, MCDONALDS, DOMINOS, etc.
Unlike other trademarks having specific geographical recognition and giving protection to a specific class of goods and services, a well-known trademark gives protection to all classes of goods and services globally.
LEGAL PROVISIONS RELATING TO WELL-KNOWN TRADEMARKS IN INDIA
Protection before the Trademark Act, 1999
Before the trademark act, of 1999, the principle of passing off gave protection to the trademark. No. of cases witnessed this.
Case: Daimler Benz Aktiengesellschaft& Anr v. Hybo Hindustan
The defendants were selling undergarments with the mark “BENZ” the company-led suit against trademark infringement. The court restrained the defendants from using such a mark on the ground that ” BENZ” is a well-known trademark having global recognition.
Case: Whirlpool Co. & Anr v. N.R Dongre
The defendants were using the mark of whirlpool for manufacturing and selling the washing machines. The company filed a suit for trademark infringement. The court gave an injunction order against the defendants from using the mark “Whirlpool”. The enactment of the Trademark Act, of 1999 gave well-known trademarks in India, special protection. The need for such high-level protection arises in order to prevent the unlawful use of marks to deteriorate the reputation of a company and to prevent confusion in the mind of consumers. Sec 11 of the Trademarks Act 1999 contains provisions relating to the extent of protection given to well-known Trademarks in India.
Extended Protection level under Trademark Act, 1999
Case: Kirloskar Diesel Recon Pvt. Ltd v. Kirloskar Proprietary Ltd
The court held that the word “KIRLOSKAR” is a trading name. Containing a wide variety of activities. There is some connection between the activities of Appellant and Respondent and it is an infringement of the trademark. The court restrained the respondent from doing the same.
Essential Factors for consideration of well-known trademark in India
WIPO adopted a joint resolution relating to well-known trademarks. It had a motive to give legal protection to such marks to minimize their misuse. India being a contracting member of the World Trade Organization was abide to adopt the factors established to consider the mark as a well-known mark.
Below are the factors established:
- A particular section of the public must recognize it.
- The duration of usage. The extent of usage. The area of usage of the trademark.
- Extent, the duration and area of promotion of a trademark.
- Area of registration and the duration of registration.
- There must be a record of enforcement of rights of the trademark owner available in respect of such trademark.
The exception to the above factors
However, there are exceptions to the above-mentioned conditions:
- Trademark is used within national boundaries i.e. within India.
- Registered trademark.
- The registration application is filed within national boundaries.
- It is well-known recognition globally.
- It is publically known.
Dilution of well-known trademarks in India
Dilution of a well-known trademark means ceasing the unique identity of a particular well-known trademark. When a particular well-known trademark loses its unique and distinct character. It consequently degrades its market reputation and selling strength.
Registrar’s responsibility
Under trademark law, it is a rule that the trademark owners can directly put a request for registration of well-known trademarks before the registrar of trademarks without initiating judicial proceedings or rectifications.
Comparatively, the process has become easy for the trademark owner to get a registered well-known trademark now. However, in case of any dispute or misuse of a well-known trademark. It is the duty of the registrar to give protection to well-known trademarks against the deceptively similar ones used with mala-fide intention.
How can we file for well-known trademarks in India?
The trademark owner can make an application for the registration of well-known trademarks in India at the office of the Registrar of Trademarks. Along with the application; there shall be a statement of the case, relevant documents, and the amount of 1,00,000/-.
LEGAL REMEDIES AVAILABLE AGAINST WELL-KNOWN TRADEMARK INFRINGEMENT IN INDIA
- Not registering identical or deceptively similar marks.
- Request by the trademark owner to remove the mark infringing their rights.
- Not allowed in a company name or logo trademark use.
- Providing injunction, damages, or account of profits to the trademark owner.
Punitive damages for infringement of the trademark.
Case: Kabushiki Kaisha Toshiba Trading v. Mr SK Sil & Anr.
The plaintiff company filed suit against the defendant for using their trademark “TOSHIBA” for selling elevators and escalators across India through www.toshibaelevator.com
In this case, the court provided punitive damages of 5,00,000/- to the plaintiff.
SUGGESTIONS
- To prevent unauthorized use of trademarks. The duration period for the registration of a trademark is long. It takes 6 months to 1 year for the registration.
- The court should direct the number of damages payable. On the basis of paying power of a company because, in the case of small enterprises, it may be difficult for them to pay heavy damages.
CONCLUSION
The comprehensive consideration of the above factors and procedure is essential for determining the scope of protection as mentioned earlier in the above process. While considering a well-known trademark, a registry is very necessary. In order to obtain protection from these well-known marks; As to the degree, the relevance of the related goods with strong arguments must be submitted. The intention of the applicant is to file the petition for the declaration of the trademark, and the degree of recognition of well-known marks.
REFERENCES
- Definition of a well-known trademark, section 2(1) (zg), The Trademarks Act, 1999.
- Criteria for determining well-known trademarks in India (https://www.obhanandassociates.com/blog/criteria-for-determining-wellknown-trademark-in-India/)
- Registration of well-known trademark in India (https://www.dandreapartners.com/registration-of-a-well-known-trademarkin-india-new-procedures/)
- Legal Remedies against trademark infringement (https://arapackelaw.com/litigation/trademark-infringement/remediestrademark-infringement/)