Everything about Well-Known Trademarks

A well-known trademark differs from a “regular trademark” in the amount of protection that is granted to the former in comparison to the latter. With the advent of globalization, people can travel more easily, have access to all sorts of information within seconds and have goods delivered to their doorsteps from across the borders. This has inevitably led to the interdependence of economies on a global scale, wherein myriad issues are coming up every day requiring unique solutions.

The concept of well-known trademarks is one such unique theory that intends to protect marks of goods/services that have become well-known in a geographic area. In this article, Anamika Gandhi explains in details the concept of well-known trademarks and describes the conditions required to grant and protect them.

I. Introduction

The title and protection of a well-known trademark are granted to products/services whose reputation is not limited to a certain geographical area. Instead, the goodwill of such a brand is so far-ranging that the brand needs to be protected from any infringement across the nation. [1] A well-known trademark is a mark which is widely known to the relevant general public. It is believed that such a trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known.

Trademark protection is essentially based on the principle of territoriality [2], which says that the fact that a product/service is protected under trademark laws of one country does not automatically grant it the right to protection in another country. The protection of a trademark in a country has no bearing upon that brand getting any trademark protection in any other country.

Though a trademark may be famous around the world, if it is not registered in a particular country, the trademark owner may have no right to prevent third parties from using the mark in that country, despite the consumers being well aware of the mark and expecting that the products bearing such mark are authorized by the owner of the well-known mark.

Therefore, departing from the principle of territoriality, the concept of a well-known trademark offers this protection to a brand even though that brand may not be registered for trademark protection in that particular country. The brand can request the authorities in a particular member country to cancel the trademark given to a particular entity if the registered trademark is deceptively similar to a well-known trademark.

Vaudable v Montmartre [3] is one of the most cited cases with respect to the well-known marks doctrine. In Vaudable, the defendants used the same name, decor and descriptive script printing of the mark “MAXIM’s” in their restaurant as the plaintiff’s well-known French restaurant. The Supreme Court of New York stated that “it is obvious that defendants’ purpose is to appropriate the goodwill plaintiffs have created in the name Maxim’s as a restaurant establishment.”

The court went on to note the fact that the French Maxim’s was not in the U.S., was irrelevant. Instead, the court focused on the defendant’s use of the mark, font, and decor to suggest a connection to the French restaurant.

II. International Protection to Well-Known Trademarks

It was the Paris Convention for the Protection of Industrial Property that for the first time in 1925 decided to grant protection to the well-known trademarks. Article 6bis which encapsulates the provision for the protection of well-known trademarks introduced in the Revision Conference of the Hague in 1925. It was later modified by the Revision Conferences of London in 1934 and of Lisbon in 1958. [4]

Article 6bis of the Paris Convention forms the bedrock for international protection of well-known marks. The purpose of this article is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in that county. The Article comes into operation even if the well-known mark is not registered in a foreign country in which protection of such well-known trademark is sought.[5]

Since India is a party to this convention, in principle this would mean that if a trademark is so famous that its reputation is known in India, then that mark should be legally protected in India. It is possible that this well-known trademark may not be registered in India, but still, it would be protected in India. It is to be noted here that if we are talking about a regular trademark here, which is not a well-known trademark, and if that trademark is not registered in India, then the owner cannot prevent third parties to use his trademark.

Thus, the purpose of the Article 6bis, and subsequently, the well-known marks doctrine, is to avoid the registration and use of a trademark, liable to create confusion with another mark already well-known in the county of such registration or use.

Article 6bis of the Paris Convention for the Protection of Industrial Property specifically deals with well-known trademarks and says that:

1. “The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.

2. However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on the ground that filing, registration, or renewal, has not been effected in the country of origin.

3. A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.”

Article 6bis of the Convention requires a contracting country to prohibit the use, refuse the application or cancel the registration of a mark which the competent authorities of such country consider as the reproduction or imitation of a trade-mark well-known as the trademark of a national of another contracting country and used for products of the same or similar kind. The Paris Convention says that it is up to the discretion of the competent authority to define what would be the definition or criteria to constitute a well-known trademark. [6]

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) also provides protection to well-known trademarks under its Article 16. The TRIPS agreement says:

“Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.”

Thus, enough international recognition and protection have been attributed to well-known trademarks to protect brand value and also the consumers from deception.

III. Well-Known Trademark in India

India introduced the concept of well-known trademarks in its laws in the year 2017 in the Trade Mark Rules 2017. [7] As per the rules, these well-known brands have been provided with special protection to protect them from infringement even in the non-competitive markets. Marks have the potential to become well-known even in the absence of sales in a market, through media such as magazines, television, or international travel, or through the all-penetrating power of the internet.

The Trademarks Act 1999 defines a well-known trademark as:

“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.”

IV. Grant of Well-Known Trademark

• Rule 124 of Trade Mark Rules 2017

Earlier the protection of well-known trademark was granted only after proceedings and rectification before the Court, however, this underwent a change in the year 2017 when a rule governing grant of well-known trademarks was introduced in 2017. This rule allows the proprietor of a trademark to file for grant of a well-known trademark to the Registrar. As such now there’s no requirement for a proprietor to go before the Court for this protection, only an application to the Registrar is enough. [8]

• Section 11 (2), Trademarks Act, 1999

According to this clause, well-known trademarks are to be recognised and protected across all the classes of goods and services. This section specifically provides that:

“A trademark which

1. is identical with or similar to an earlier trademark; and
2. is to be registered for goods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.”

Conditions for Grant of Well-Known Trademarks:

• Section 11 (6) Trademarks Act, 1999

This section provides factors on determining when a brand can be granted the protection of a well-known trademark. [9] The section says:

1. “Knowledge about the mark in relevant sections of the public;

2. the duration, extent and geographical area in which the trademark is used;

The duration, extent and geographical area in which the trademark is promoted with respect to the goods and services to which it applies:

1. The registration or application for registration of the trademark to the extent they reflect the use or recognition of the trade mark;

2. the record of successful enforcement of the rights in that trademark including the record stating that the trademark has been recognised as well known by any court or Registrar.”

• Section 11 (9) Trademarks Act, 1999

The section specifically mentions certain conditions which need not be required for the purpose of granting of a well-known trademark. These conditions are:

1. “That the TM has been used in India

2. That the TM has been registered

3. That the application for registration of the trademark has been filed in India

4. That the trademark is well known in or registered in any other jurisdiction other than India

5. That the trademark is well-known to the public at large in India.”

V. Determining Whether a Trademark is Known

• Section 11 (7) Trademarks Act, 1999

This section provides that to determine whether a trademark is known or recognised in a relevant section of the public for the purposes of sub-section (6), the Registrar shall take the following into account:

1. “The number of actual or potential consumers of the goods or services;

2. the number of persons involved in the channels of distribution of the goods or services;

3. the business circles dealing with the goods or services, to which that trade mark applies.”

VI. Protection of Well-Known Trademarks

• Section 11 (10) Trademarks Act, 1999

It is an obligation on the registrar that in case of a dispute and/or infringement the registrar must protect the interest of the well-known trademark against the identical ones. This section provides that:

1. “Protect a well-known trade mark against the identical or similar trademarks;

2. take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.”

VII. Well-Known Trademark Cases in India

There have been many cases for protection of well-known trademark in India. In the case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan [10], the plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark BENZ for selling its undergarments. The Court in its decision restrained the defendant from using the mark Benz and also stated that there was no valid reason for the defendant to adopt the name Benz for selling its products which were already associated by common people with a highly reputed automobile brand.

In Rolex Sa v. Alex Jewellery Pvt Ltd & Ors [11], the plaintiff filed a case against the defendants who were using the trade name “Rolex” to sell their artificial jewellery. The Court while holding that the plaintiff’s mark was a well-known trademark which the public associated with watches of the plaintiff’s brand, restrained the defendants from using the trade name “Rolex” as it was liable to cause confusion in the minds of people who would think that the artificial jewellery was from the brand of the plaintiff.

Similarly, in the case of Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu[12], the Delhi High Court held that the mark MICROSOFT was a well-known mark since was being used and known to most of the public throughout the world. The court held that the defendants were not allowed to use the same mark because:

“Either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got a unique goodwill and reputation.”

VIII. Conclusion

The increase in global recognition of world brands has increased the demand for well-known mark protection for trademarks. A mark is said to attain the status of a well-known mark when the mark has been continuously used and extensively promoted either within a territory or across the globe such that the public has started associating the mark with its proprietor and no one else, due to the extensive usage and promotion of the mark.

It is absolutely essential that the extra protection of a well-known trademark be provided to such brands with high-reputation because the brands invest a lot of their time and money in creating their brand recognition, and it would be very unfair if a third party partakes in its profit and reputation without authorization, even if the company is yet to use that trademark for commerce in that country.

---

References

[1]Frederick W Mostert, ‘Well-Known and Famous Marks: Is Harmony Possible in the Global Village’ (1996) 86 Trademark Rep.

[2]Tashia A Bunch, ‘Well-Known Marks Doctrine: Where Do We Go from Here’ (2008).

[3]20 Misc 2d 757 (NY SC 1959).

[4]Ahmad Takouche, ‘Well-Known, or Not Well-Known: That Is the Question. The Paris Convention for the Protection of Industrial Property’s Article 6bis in the Context of American Trademark Law’ (2019) 9 UC Irvine L Rev.

[5]Ibid.

[6]Stephen P Ladas, ‘International Protection of Well-Known Trade-Mark’ (1951) 41 Trademark Rep 661.

[7]Oorja Jain, India: Protection Of Well-Known Marks: WIPO Joint Recommendation. Available Here (accessed 02 December 2020).

[8]Ibid.

[9]Sonal Sodhani, India: All You Need To Know About “Well-Known Trademarks”. Available Here (accessed 02 December 2020).

[10]AIR 1994 Del 2369.

[11]2009 (41) PTC 284.

[12]2014 (57) PTC.

---

1. Intellectual Property Rights | Notes, Cases & Study Material
2. How to prepare for Judicial Services Exam? Legal Bites Academy