Legal Hurdles In Securing Well-Known Trademark Status In India

Contributor: Anusaya Panda

Well-recognized trademarks or marks possess a unique standing under intellectual property (IP) law when a brand is widely known. In India and numerous other nations, well-known trademarks are notably utilized and safeguarded regardless of their registration or the range of goods or services. This provides enhanced protection for internationally connected brands and helps avert confusion, dilution, and losses resulting from association with an incorrect entity. Nevertheless, attaining the designation of “well-known” in India is challenging. There are several legal obstacles a business must navigate to achieve this, by demonstrating the reputation it has built, managing substantial legal expenses, navigating inconsistent judicial rulings, and grappling with jurisdictional complications.

The article analyzes the primary concerns in legal matters related to the classification of products as renowned trademarks in India by examining significant cases, legal regulations, and the practical challenges encountered by organizations achieving well-known trademark status.

Burden Of Proof: Demonstrating Recognized Status

The significant amount of proof that Indian trademark owners must present to demonstrate that their mark has gained recognition among the general public is the primary obstacle to becoming well-known under the new rules. While well-known trademarks are included in the Trademarks Act of 1999, the responsibility for demonstrating reputation and acknowledgment within India lies with the owner.

  • Types of Evidence Required

It takes into account the subsequent elements outlined in Section 11(6) of the Trademarks Act when evaluating if a trademark is recognized as well-known.

  • Degree of Knowledge and Association: demonstrating the consumer’s degree of understanding and familiarity with the brand, whether among the general public or within particular segments of the community.
  • The duration of trademark usage, the extent or geographic region of that usage.
  • Promotion and Advertising: Demonstrating the scope and characteristics of the advertising and promotional efforts, which encompass advertisements, sponsorship deals, and various media exposure.
  • Judicial or Administrative Recognition: Prior legal or regulatory acknowledgment that the trademark is recognized as well-known in India or other regions.
  • Challenges in Proving Reputation

Demonstrating that a trademark is widely recognized is quite demanding and costly, particularly when it spans various areas of India. Additionally, many companies find it difficult to evaluate their brand’s standing, especially when their operations are spread across multiple industries or sectors. For example, in Tata Sons Ltd. v. Manoj Dodia & Ors, the Delhi High Court based its decision on the proof supplied by the firm showing considerable awareness and a longstanding presence in India that spans several years to conclude that the “TATA” brand has attained “well-known” status. In numerous instances, though, it can be quite challenging to obtain such evidence for brands overall, particularly since there may not be the same level of recognized reputation as there is with an established brand like TATA.

Costs Of Legal Proceedings

Securing a recognized trademark in India poses both a significant evidentiary hurdle and a costly endeavor. In this context, trademark holders are required to invest substantial sums in gathering evidence, conducting market analysis, and engaging in legal proceedings to establish the notoriety of their mark.

  • Procedure for filing application

A well-recognized trademark can be registered in India in the following manner:

  • Court Proceedings: In trademark litigation, it is within the court’s authority to affirm a mark as recognized if there is adequate proof.
  • Registrar of Trademarks: A trademark proprietor may approach the Registrar to register their mark as a well-known trademark per Rule 124 of the Trademarks Rules, 2017. This necessitates the submission of an application and a fee of INR 1 lakh, along with supporting evidence.

Both of these approaches necessitate considerable legal costs and duration. The judicial path entails lengthy litigations, and the expenses associated with fighting infringement claims while attempting to achieve recognized status can be burdensome for smaller enterprises.

Inconsistent Judicial Interpretations

Judicial rulings represent one of the legal obstacles in obtaining the designation of well-known trademark in India because of inconsistent interpretations by the judiciary. Indian courts possess extensive discretionary authority to assess if a trademark meets the criteria for being classified as a well-known trademark, as the standard of evidence varies from one court to another. 

  • Examples of Inconsistent Judgments
  • In ITC Limited v. Philip Morris Products SA, the Delhi High Court recognized ITC’s “Classic” mark as a well-known brand in the cigarette industry and evaluated multiple elements including advertising, consumer research, and media exposure.
  • In Toyota Jidosha Kabushiki Kaisha v. M/s Prius Auto Industries, it was ruled by the Delhi High Court that the “Prius” trademark was not widely recognized in India, as there was no acknowledgment of the mark by consumers in the country at that time. The Supreme Court overturned this decision, yet the case illustrates how rulings can vary based on judicial assessments of public familiarity or the absence of it.

This, naturally, introduces uncertainty for trademark owners. One court may acknowledge that a mark is renowned or widely recognized, whereas another might not view it in the same light.

Jurisdictional Complexities

This adds more intricacy to the procedure of determining the status of renowned trademarks within the framework of India’s federal system. Various High Courts in India handle trademark cases, each possessing its own legal interpretations and perspectives on intellectual property law. Thus, a trademark may be recognized as well-known in one region of the country, yet not hold the same status in another.

  • Cross-Jurisdictional Recognition- As Indian courts are now adopting a more consistent approach to intellectual property rights, the challenge arising from the lack of centralized standardization for trademark recognition across various regions is that a trademark owner might have to initiate multiple lawsuits in different courts nationwide to guarantee that their mark is uniformly acknowledged and safeguarded by law throughout the country.
  • The position of the Registrar- In 2017, the Trademarks Rules introduced Rule 124, which requires the Registrar of Trademarks to keep a centralized record of well-known trademarks. Once a trademark is recognized as well-known and added to this list, it receives protection throughout India, regardless of its registration status for any category of goods or services. However, achieving this centralized acknowledgment is a challenging and costly process.

Safeguarding Against Dilution And Infringement

Once recognized as famous, it receives more robust protection against any infringement and dilution. Nevertheless, upholding these rights presents another frustrating challenge for trademark owners. The Indian market is undeniably varied, and renowned trademarks often face significant obstacles from unauthorized usage or imitation, particularly in smaller markets and less-regulated sectors.

  • Watering down and Blurring – Recognized trademarks are increasingly susceptible to dilution, where a business that does not own the trademark uses a similar mark, gradually blurring the distinction for consumers between the original trademark and the similar one. In India, the judiciary has been quite favorable towards safeguarding recognized marks against dilution; nevertheless, the difficulties associated with establishing dilution or tarnishment are generally very burdensome, particularly when the trademark is used on products or services that have no connection to those initially protected by the trademark. For instance, in Daimler Benz v. Hybo Hindustan, the Delhi High Court denied the request to weaken the “Benz” trademark even after determining that the defendant had utilized the mark on various products, specifically underwear. However, this isn’t the sort of case that is commonly pursued in court—and it indeed presents challenges for litigation.

Conclusion

The situation regarding recognized trademarks in India is intricate and challenging, as numerous legal and procedural obstacles must be navigated by businesses. The requirements for proof, substantial expenses, varied court interpretations, and complications related to jurisdiction collectively complicate the process for brands to secure and benefit from this status. Nevertheless, keeping these factors in mind, achieving the designation of a recognized trademark offers appealing advantages, including protection against infringement, dilution, and misuse.

These would entail the overcoming of a forward-thinking role undertaken by businesses in offering a comprehensive enumeration of reputation features associated with trademarks and close collaboration with all legal experts involved in formulating strategies tailored to the existing trademark environment in India. As Indian trademark legislation continues to progress, it is expected to introduce essential efficiency in assessing whether a trademark meets the criteria of a well-known mark, at least for the time being; nevertheless, it remains a contentious legal arena. 

References

  1. https://www.wiley.com/en-us/essentials+of+trademarks+and+unfair+competition-p-9780471209416
  2. https://www.ijlmh.com/wp-content/uploads/2019/03/passing-off-and-infringement-of-well-known-trade-mark%e2%80%99s-in-india.pdf
  3. tata sons ltd versus manoj dodia & others lnind del [2011]
  4. https://ipindia.gov.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf 

©2023. SatyakiLegal. All Rights Reserved.

Scroll to Top