Protection of well-known marks:

Developments in the UK and India.

What is a trademark?
Trademark defined under Section 2 (zb) of the Trade Marks Act, 1999 as, "trade mark means a mark
capable of being represented graphically and which is capable of distinguishing the goods or services of
one person from those of others and may include shape of goods, their packaging and combination of
colours." A mark can include a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colors or any such combinations

What is well-known trademark?

The well-known trademark as defined under Section 2(1) (zg) of the Trade Marks Act, 1999 provides-
“well-known trademark, in relation to any goods or services, means a mark which has become so to the
substantial segment of the public which uses such goods or 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.”

Unlike other trademarks whose goodwill and reputation is limited to a certain specified geographical
area and to a certain range of products, well-known trademarks have its goodwill and reputation
protected across the nation and across categories of goods and services. It is law that restricts the Trade
Mark Registry to allow and register any mark as a trademark which is deceptively similar to any of the
well-known trademark. For instance, Google has been registered as a well-known trademark of Alphabet
Inc., which thereby means only Alphabet Inc. can register the term 'Google' for any category of goods
and services. Even if the service is not related to the Internet industry, no other company but Alphabet
Inc. can register 'Google' as its trademark.
Developments in India
Timeline:

-In india prior to formulation of rules for well known marks, they were granted protection by way of
common law formulations i.e passingoff example case of Daimler Benz vs Hybo Hindustan

-1999:The trademarks act of 1999 awarded protection to wellknown marks even if they were not
registered or used in India. The Act also provided owners of trademarks to oppose infringement at the
stage of registration itself

- 2010:The Trade Mark Amendment Act, 2010 brought in changes in trademark act to get in accordance
with Madrid Protocol. The 2010 amendment also specified the grounds for trademark to be declared as
well known.

Section 11(6) and 11(7) deal with the facts that the registrar will take in to consideration while
determining that the mark is a well known mark. These are as follows:
a) The knowledge or recognition of the alleged well known mark in the relevant section of the public
including knowledge obtained as a result of promotion of the trademark.
b) The duration, extent and geographical area of any use for that trademark.
c) The duration, extent and geographical area for any promotion of the trademark including advertising
or publicity and presentation at fairs or exhibition of the goods or services in which the trademark
appears.
d) The duration and geographical area of any registration of any publication for registration of that
trademark under this Act to the extent that they reflect the use or recognition of that trademark.
e) The record of successful enforcements of the rights in that trademark, in particular the extent to
which the trademark has been recognized as a well known trademark by any Court or Registrar under
that record.
f) The number of actual or potential consumers of the goods or services.
g) The number of persons involved in the channels of distribution of the goods or services.
h) The business circle dealing with the goods and devices to which the trademark applies.
i) Whereas a trademark has been determined to be well known in at least one relevant section of the
public in India by any court or Registrar, the Registrar shall consider that trademark as a well known
trademark for registration under this Act.
In addition to this there are several facts that are not to be taken in to consideration by the Registrar in
determining the well known trademark. These are as follows:
a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for
registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India

- 2017The Trade Marks Rules, 2017, has -implemented certain significant changes in the procedural
aspect of declaring a trademark to be a well-known mark by way of filing a request before the Trade
Marks Registry along with supported documents in the form of statement of case and an official fee of
INR One hundred thousand ( One Lakh). The Office of Controller General of Patents, Designs and Trade
Marks (CGPDTM) has also issued notifications elucidating the process of submitting the evidences
showing the use of trademark,existing and potential customers for goods/services available under
trademark, the duration, extent and geographical area of use of the mark, judicial pronouncements
wherein trademark declared to be well known etc.

Rule 124 of Trade Mark, 2017: This rule permits the trademark owners to file a request for grant of
"well-known" trademark to the Registrar in form TM-M. Before the coming up of this rule, a mark was
declared well-known only after proceedings, rectification and opposition held before the Hon'ble courts.
With the advent of this rule and the procedure laid thereof, a trademark owner can request for a well-
known trademark without getting into any proceedings or rectifications. Rule 124 ensures a trademark
to be granted the tag of "well-known" merely by an application of request to the Registry.
Developments in UK
 Paris Convention Article 6Bis

“The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an
interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to be well known in that
country as being already the mark of a person entitled to the benefits of this Convention and used for
identical or similar goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an imitation liable to create confusion
therewith.”

 TRIPS agreement Article 16

“The owner of a registered trademark shall have the exclusive right to prevent all third parties
not having the owner’s consent from using in the course of trade identical or similar signs for
goods or services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be presumed. The
rights described above shall not prejudice any existing prior rights, nor shall they affect the
possibility of Members making rights available on the basis of use.”

 The general assembly of World Intellectual Property Organization in its joint recommendation
Article 2: Determination of Whether a Mark is a Well-Known Mark in a Member State has
specified rules for determining well known marks

 The United Kingdom protects well-known marks through its 1994 Trade Marks Act. The Act
protects marks that are well known in the United Kingdom, although actual use in the United
Kingdom is not required. The owner of the mark must either be a national of a Paris Convention
country, be domiciled in a Convention country, or have a real and effective industrial or
commercial establishment in a Convention county.
One atypical feature of British law is that any infringement cause of action requires a finding of
likelihood of confusion. There must be confusion as to source of origin, not merely the
probability that the consumer will recall the other trademark. This would allow for "parody"
trademarks where it may not be possible to prove source confusion.
Critical Analysis
Importance of well known trademarks

Well known marks are symbols of product or service which have become associated with the company
and brand, surpassing geographical boundaries. These marks carry value in terms of goodwill and high
standards of delivery associated with the company.

According to Forbes, Valuation of Apple brand stands upto 200bn$. The brand and its trademark forms
intangible asset for the company created through years of investment in advertising (1.8bn$ were spent
on advertising in 2015) and delivering products which stand true to the value. Branding also leads to
creation of loyal customers which trust the brand and its new products based on past experience. Apple
stands for innovation and aesthetic designs, its trademark logo on any product guarantees the same.

If allowed to misuse by others it may lead to damage to their brand value and loss of brand loyal
customers. Passing off of other products as Apple’s exploits the efforts of company and reaps the
benefits of investment made by Apple.

Why well known trademarks need to be protected?

Consider the case of Rolex Sa vs Alex jewellery pvt ltd ; wherein defendant is manufacturing distributing
and trading artificial jewellery under the name ROLEX.

Plantiff claims: First adoption of trademark ROLEX and registration in Switzerland in 1908. Rolex is a well
known trademark as defined under article 6 of Paris convention.

Defendant claims: Law of limitation bars the suit. Protection under S.34 and 29(4)(c) of the Trademarks
Act.

Ruling: The court held that “Rolex” was a well known trademark since it has been registered under more
than 140 districts and also has reputation in India.

Analysis:

i) The well known trademarks need to be protected as passing off goods which maybe of
lower standard may damage the trademark holder.
ii) Cashing in on the brand equity invested and developed by the owner
Analysis of the Amendments
 The amendment allows well known marks to be extended beyond the scope of business of the
company. Consider the case of BATA vs BATAFOAM. The Bata India Limited (Bata) complained,
against passing off by the defendants, who were using the mark BATAFOAM for rubber foam
used in manufacturing mattresses, sofas, cushions, and automobile seats. Bata’s mark BATA is a
famous brand in India for quality footwear.

Plantiff claims: by using the challenged mark BATAFOAM, the defendants had been deceiving
customers and that such fraudulent and bad-faith conduct amounted to unjust enrichment by
trading off the plaintiff’s goodwill and reputation

Defendant claims: denied these allegations and argued that the parties’ respective businesses
were different

Judgment : Allahabad High Court upheld plantiffs claims.

 Degree of knowledge or recognition of the alleged well known mark in the relevant section of
the public
The case of Hari Puttar vs Harry Potter, On September 22, 2008, the Delhi High Court, in an
infringement and passing off suit filed by Warner Brothers against Harinder Kohli, Mirchi Movies
Limited, et al., held that even assuming there was any structural or phonetic similarity between
the marks HARRY POTTER and HARI PUTTAR, the possibility of any confusion arising between
the two among the relevant class of viewers was quite remote.
The court stated that Harry Potter films are targeted to entertain an elite and exclusive audience
—an audience able to discern the difference between, , a film based on the Harry Potter books,
and a Punjabi comedy

 The duration, extent and geographical area for any promotion of the trademark including
advertising or publicity
Consider passing off action filed by Whirlpool Corporation to restrain N R Dongre from
manufacturing, selling, advertising or in any way using the trade mark Whirlpool in respect of
their goods. The claim of Whirlpool was based on prior user of the mark and a trans-border
reputation indicating that any goods marketed with the use of the mark gave the impression of
it being a good marketed by it. 
Whirlpool was a ground-breaking decision in IP jurisdiction, Supreme court stated that merely
advertising a trademark is conclusive to be use and is sufficient to prove reputation and goodwill
in India, even when no goods are being sold on the market.
  Removal of ambiguity by amendments
The 2003 amendments clearly defines the scope and recognition of well known marks. It
provides explicit grounds to identify well known marks. The amendment has also specified
grounds for which simply wouldn’t support the claim to be well known marks. Just because a
trademark is registered and used in India doesn’t not qualify it to be a well known mark , it
needs to fulfill the criteria mentioned.

 Analysis of rule 124: The new rule has enabled trademarks to achieve well known status during
the process of filing. This rule removes the ambiguity brought in by the completion date of
process. The company will be able to protect its intellectual property even if the process
completion has not taken place.

 The 2017 amendment has laid down clear procedure to filing for well known marks. elucidating
the process of submitting the evidences showing the use of trademark,existing and potential
customers for goods/services available under trademark, the duration, extent and geographical
area of use of the mark, judicial pronouncements wherein trademark declared to be well known
etc.

 The act effectively protects the rights of trademark owners and the rights of the public,
promotes the maintenance and improvement of quality in both goods and services .It promotes
competition. It preserves good will and investment in product quality and promotion, and
reduces the distortions of competition which would result from purchases based on confusion
or deception and from the unjust enrichment of unfair competitors.

Recommendations:
 Limitations to what can be registered:
 3D designs eg kitkat chocolate bars tried registering its unique shape which
resembles its brand but was denied
 Colors: No mention of registration of particular color schemes/ combinations.
Tiffany’s famous blue color has been registered as trademark but Redbull lost its
silver/blue combination of colors trademark.
 Objections to registration of well known mark should be allowed even in phase of
applying for registration as rule 124 allows trademark to enjoy status of well known
mark even during the process of filing.
 Stricter regulation against passing off
Conclusion
The purpose of trademarks is two fold: firstly to protect the public by ensuring they are being given the
product or service as stated by the trademark for which they are paying and secondly to protect the
honest firms.The well known marks are intangible assets of a company, they require sizeable
investments in terms of expenses on R&D and advertising along with continuous efforts of maintaining
goodwill.

The protection offered to well known marks by Trademarks act and through its numerous amendments
is effective and adequate. The recent developments in protection of well known marks has led to
creation of specific standards to identify well known marks and set process to their registration. The law
protects the interest of public and company to promote innovation and honest competition.
References:

http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html#s2

https://www.wipo.int/edocs/lexdocs/laws/en/in/in069en.pdf

https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx

https://www.ip-watch.org/2017/03/22/changing-perspective-well-known-trademarks-india/

https://www.hg.org/legal-articles/protection-of-well-known-trademarks-in-india-22346

https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf

https://www.casemine.com/judgement/in/58117eb32713e179478af29e

https://www.casemine.com/judgement/in/56e11c95607dba3896617c09

https://www.ssrana.in/ip-laws/trademarks/well-known-trademarks-india/

https://www.inta.org/TMR/Documents/Volume%20101/vol101_no5_a1.pdf

https://www.upcounsel.com/most-valuable-trademarks

https://h2o.law.harvard.edu/text_blocks/6543

https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm

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