Well-Known Trademark: Its Application In India And Misuse

Contributor: Rishab Kumar Jha

In today’s globalized marketplace, trademarks serve as essential tools for distinguishing products and services while also holding significant commercial value. Among the various categories of trademarks, well-known trademarks stand out due to their widespread recognition and reputation, often extending beyond national borders. India, with its well-established trademark laws, acknowledges the importance of these marks and provides legal safeguards to protect them. This article explores the concept of well-known trademarks, outlines the relevant legal provisions, and explains the process of obtaining such recognition.

What is a Well- Known Trademark?

A well-known trademark, often referred to as a “famous trademark,” is a mark that has gained significant public recognition and trust. These trademarks are easily identifiable and are strongly linked to a specific brand or product. Their reputation often extends beyond their original industry, making them recognizable across multiple sectors. Businesses highly value their well-known trademarks and ensure they receive strong legal protection.

As per Section 2(1)(zg) of the Trademarks Act, 1999, a “well-known trade mark” is defined as a mark that, in relation to any goods or services, has gained such recognition among a substantial portion of the public that its use for other goods or services would likely be perceived as indicating a connection between those goods or services and the owner of the original trademark.

Examples of Famous Trademarks

Google: As the leading search engine globally, Google has become synonymous with online searches. Its simple yet vibrant logo is instantly identifiable.
Nike: The iconic Nike swoosh is a well-known symbol in the sports and apparel industry. Additionally, the “Just Do It” slogan is widely associated with athleticism and motivation.
Amazon: The curved arrow in Amazon’s logo, resembling a smile, signifies customer satisfaction. With millions of users worldwide, Amazon’s influence extends far beyond e-commerce.
Ferrari: Ferrari’s prancing horse emblem is a hallmark of luxury and high-performance sports cars, symbolizing prestige and excellence in the automotive industry.

Deciding Factors for well-known trademarks

To qualify for well-known trademark status in India under Section 11(6) of the Trademarks Act, 1999, certain criteria must be fulfilled:

The trademark must enjoy significant recognition and goodwill among the relevant public, with awareness in India gained through promotional activities.
The mark should have been in consistent and extensive use over time, with a broad geographical reach.
Promotional activities, including advertising, public relations campaigns, and participation in trade fairs or exhibitions, should be widespread and impactful.
The duration and geographic scope of the trademark’s registration or application under the Act should demonstrate its usage and public recognition.
A strong track record of enforcing trademark rights, including acknowledgment as a well-known mark by courts or the Registrar, is a key consideration.

Filing Procedure for Well-Known Trademarks

Rule 124 of the Trademark Rules, 2017, outlines the procedure for obtaining well-known trademark status in India. The process includes the following steps:

Filing an Application: Any interested party can apply online by submitting Form TM-M along with the necessary documents. These documents should include a statement justifying why the trademark deserves well-known status. The government fee for filing such an application is ₹1,00,000 per application.
Submission of Evidence: The applicant must provide substantial proof of the trademark’s recognition and reputation, such as market surveys, sales data, advertising records, and media coverage.
Examination Process: The Registrar evaluates the application and submitted evidence to determine whether the mark meets the criteria for well-known status, ensuring that only widely recognized marks are approved.
Publication in the Trademarks Journal: Once recognized, the mark is published in the Trademarks Journal to allow third parties to file objections. If no opposition is raised within the prescribed period, usually four months, the trademark is officially granted well-known status. However, it is important to note that courts retain the authority to determine whether a trademark qualifies as “well-known,” even after the introduction of Rule 124.

Case Study:

In the landmark case of Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan, a significant trademark dispute arose. A retailer dealing in undergarments adopted the term ‘Benz’ for its brand and introduced a logo strikingly similar to the globally recognized Mercedes-Benz emblem. The iconic three-pointed star within a ring is synonymous with luxury automobiles. Interestingly, the defendant, operating in the undergarment sector, designed a logo featuring a human figure within a three-pointed ring. In response, Mercedes-Benz initiated legal proceedings.

Verdict: The court ruled in favor of Mercedes-Benz, stating that the defendant’s actions constituted trademark infringement. Given the high prestige of the Mercedes-Benz three-star ring in the automotive industry, the court prohibited the defendant from using both the “Benz” name and a similar emblem for undergarments. The decision gained global attention, reinforcing the strong international reputation of the Mercedes-Benz trademark. It was emphasized that “Benz” is inherently associated with the automobile sector, and its unauthorized use in an unrelated industry not only amounted to infringement but also indicated an attempt to unfairly capitalize on its worldwide recognition.

This case serves as a crucial precedent in the protection of well-known trademarks. It highlights the importance of stringent legal frameworks to uphold the exclusivity of famous marks, preventing unauthorized usage that could tarnish their reputation and mislead consumers.

The Benefits of a Well-Known Trademark Status In India

In India, to date, there are 117 trademarks registered as well-known trademarks, including Cartier, Whirlpool, and Kit Kat. This leads to the question – Is it essential for businesses targeting the Indian market to register their trademark as a well-known trademark? To answer the question, it is imperative to get a holistic understanding of the benefits enjoyed by well-known trademarks under the Act.

Firstly, under Section 11(2), a relative ground for refusal of trademark vis-à-vis well-known trademarks is incorporated – it provides that a trademark that is, (a) Identical or similar to an earlier trademark, and; (b) Is to be registered for goods or services that are dissimilar to those for which the earlier trademark was registered, shall not be registered if the earlier trademark enjoys a well-known trademark status in India, and if the usage of the later trademark without a justifiable reason would harm the distinctive character or repute acquired by the earlier well-known trademark.

Secondly, under Section 11(10), the Registrar, while evaluating an application for registration of a trademark and any opposition thereto, is obligated to protect well-known trademarks from trademarks that are either identical or similar, and must take into consideration the mala fide intent of the applicant or the opponent affecting the rights related to the trademark.

Therefore, owing to the high level of protection provided to well-known trademarks under Section 11(2) and Section 11(10), it is advised for businesses targeting the Indian market to register their trademark as a well-known trademark.

Significance of Well-Known Marks

Well-known trademarks have gained increasing importance in India’s evolving business environment. With the country’s economy expanding, both local and global brands are competing to capture consumer interest. In this highly competitive market, well-known trademarks serve as powerful assets. They not only assure consumers of the quality and authenticity of products and services but also help in building strong brand loyalty.

Moreover, well-known trademarks play a crucial role in trademark litigation. When a mark is officially recognized as “well-known,” it significantly strengthens the trademark owner’s legal standing, making it more difficult for infringers to claim ignorance of the mark’s reputation.

Misuse of Well-Known Trademark

In India, the misuse of well-known trademarks is addressed under the Trade Marks Act, 1999, through various legal remedies, including civil actions, criminal proceedings, and administrative measures, all aimed at preventing consumer confusion and safeguarding brand reputation. The Trade Marks Act, 1999 provides the overarching legal framework for trademark protection, while the Trade Marks Rules, 2017 lay out the procedures for determining well-known trademark status. Several key provisions of the Act reinforce this protection. Section 27(2) allows trademark owners to seek remedies for infringement or misuse, while Section 11(6) outlines the criteria for determining a trademark’s well-known status, such as recognition, reputation, goodwill, and consumer awareness. Furthermore, Section 134 grants trademark owners the right to file infringement suits in District or High Courts, and Section 135 empowers courts to grant relief in such cases, including injunctions, damages, or an account of profits.

To prevent the misuse of well-known trademarks, the law prohibits the registration of identical or deceptively similar marks, even if they apply to different goods or services. It also enables trademark owners to take legal action against unauthorized usage, regardless of the industry in which the infringement occurs. Remedies available include civil action, where trademark owners can seek injunctions, monetary compensation, or profit recovery; criminal proceedings, which may result in fines or imprisonment for severe trademark violations; and administrative remedies, such as the Trade Marks Registry’s authority to remove infringing marks from the register.

When assessing well-known status, several factors are considered, including the degree of recognition among the public, the extent and duration of usage, the geographical reach of the trademark, the level of advertising and promotion, and the goodwill and reputation associated with the brand. Notable legal cases highlight the enforcement of these protections. In Haldiram India Pvt. Ltd. v. Berachah Sales Corporation & Ors., the Delhi High Court recognized “Haldiram’s” as a well-known trademark and restrained the defendants from using the name or any deceptively similar mark. Similarly, in Puma SE v. PUMA Football Club, the court upheld the well-known status of the Puma brand. In Time Incorporated v. Lokesh Srivastava, the court not only granted relief for trademark infringement but also awarded both punitive and compensatory damages. These cases underscore the strong legal framework in place to protect well-known trademarks in India, ensuring their exclusivity and preventing dilution of their reputation.

Conclusion

In India, as in the rest of the world, well-known trademarks hold immense value for both businesses and consumers. They symbolise reliability, quality, and an enduring tradition of excellence. The legal framework of India acknowledges the significance of safeguarding these trademarks, ensuring that they continue to flourish and retain their individuality. The well-considered legal provisions, filing procedure, and trademark rules of 2017 aid in preserving the integrity and reputation of well-known trademarks, thereby fostering innovation and the expansion of national brands.