INTRODUCTION

Under Indian trademark laws, it is advisable to register your trademark to protect it from infringement. However, in some cases, certain trademarks are protected even if they are not registered. These trademarks are the ones, those who have established themselves enough and are reputed and recognized enough to be known to a majority of its target and relevant audience. Thus such marks are given the status and legal rights similar to those of registered trademarks.

THE CONCEPT OF A WELL KNOWN TRADEMARK

Well-known trademarks are defined under Section 2(1)(zg) of The Trademark Act 1999. It defines Well-known trademarks as, ‘‘well-known trade mark”, 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 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”[1].  Unlike regular trademarks, the goodwill and reputation of a well-known trademark is not just limited to a specific geographical area, but across the nation and across relevant categories of goods and services.

In the case of Rolex Sa v. Alex Jewellery Pvt Ltd & Ors[2], the company was selling artificial jewellaries in the name of ‘Rolex’. The court however, granted an injunction towards it even though Rolex only manufactured watches. This is the type of protection that is provided to a brand under the category of a Well-known Trademark.

ESSENTIAL CONDITIONS REQUIRED CATEGORIZING A TRADEMARK AS WELL-KNOWN

The factors that determine whether a trademark falls into the category of a well-known trademark or not, is enlisted under Section 11(6) of The Trademarks Act, 1999:

1. Knowledge and Recognition of the Trade Mark in a relevant section of the public: This is one of the primary requirements of a well known trademark under Sec 11(6) of the act. The information about what exactly the phrase ‘General Public’ does constitutes, was clarified initially in the two cases Tata Sons Ltd. v. Manoj Dodia & Ors,[3] and Ihhr Hospitality Pvt Ltd v. Bestech India Pvt Ltd.[4] It was held under these cases that ‘members’ would constitute manufacturers alongside consumers and businesses. Another notable case of Canon Kabushiki Kaisha, asserted that even if the mark is only Well-known amongst one relevant section of the public, it can still be considered to be Well-known Trademark in general.
2. Extent, Duration, and the Geographical Area in which the trademark is used: In the case of Sarda Plywood Industries Ltd. v. Deputy Registrar Of TradeMarks[5], the Intellectual Property Appellate Board (IPAB) suggested that a period of one year was not sufficient for a product to fulfill the requirement of being distinctive as per Section 9 of The Trademark Act . Thereafter, this argument was altered in the case of Britannia Industries Ltd v. Itc Limited[6], where the court held that a product with a distinctive packaging does not require a fixed number of years to gain its distinctiveness.
3. Extent, Duration, and the Geographical Area in which the trademark is promoted: Its not just the usage but also the promotion of the mark which matters. As mentioned above, in the Rolex case, the Delhi High Court took serious consideration to the advertisements conducted by Rolex in India since 1947.
4. Duration or Geographical Area of registration or application of registration: The geographical territory and the duration of the registration of a mark are two essential factors determining whether the mark is well-known or not. For instance, when a trademark is registered in other jurisdictions, it is recognized globally. Thus this “transborder” recognition is an essential factor in determining the recognition of the well-known trademark.

CONDITIONS NOT NECESSARY FOR A TRADEMARK TO BE CATEGORIZED AS A WELL-KNOWN MARK:

Under the Trademark Act 1999, Section 11(9) specifies the conditions that are not necessary for a trademark to be considered as Well-known. These conditions are that:

1. The mark has been used in India.
2. The mark has been registered.
3. The application for registration of the mark has been filed in India.
4. It is a Well-known mark or is registered in any jurisdiction other than India.
5. The mark is known by the public at large.

Filing of a well-known trademark

The incorporation of the new Trademark Rules 2017, led to the trademark owner being able to directly file an application for a well-known trademark to the Registrar. The rules provided a detailed and systematic process of obtaining a Well- Known Trademark in India. The applicant is supposed to pay a fees of Rs. 1,00,000 /- which is to be paid online and fill the prescribed form for the same. The application also needs to be accompanied a statement of case, relevant documents and evidence. Once the application is submitted, the considerations regarding the application will be on the basis of the documents submitted. The required documents that need to be submitted along with the application are:

• Statement of case – This document need to describe the applicant’s right on the trademark and its claim to fall under the category of a well-known trademark.
• The evidence of the mark being recognized both nationally, as well as internationally.
• Details of successful enforcement of rights in case the trademark has been recognized as well-known by the court in India or Trademark Registrar.
• In case the mark has been recognized as well-known under any judgment of any court, then a copy of same has to be submitted.
• The evidences proving the applicant’s  right and justifying his claim shall include documents showing-
  • Use of trademark, or any application filed for registration of trademark, or registration obtained.
  • Annual sale turnover of the business of the claimant.
  • Actual or potential number of customers under the said trademark.
  • Publicity and advertisement of the said trademark along with the expenses incurred thereof.
  • Knowledge or recognition of the trademark in relevant section of public across the globe.

All the above mentioned documents along with the evidences, needs to be submitted in a specific format i.e. in a PDF format with a resolution of 200 X 100 dpi on an A4 size paper. Also, the total size of the documents and the evidence should not exceed the size of 10 MB.

TYPES OF TRADEMARK IN INDIA | COMPANY TRADEMARK REGISTRATION, TO KNOW MORE, VISIT -   

CONCLUSION

In this competitive market, it is very important for the brands and businesses to be known to and recognized by its audience. Once, its able to achieve that successfully, even the law decided to be lenient. The concept of well-known trademark is one such example. In the absence of registration of the trademark, the provisions relating to well known trademark makes sure that such unregistered marks are also well protected from infringements by the competitors.

BY-AAYUSHI CHOPRA

References:

https://blog.ipleaders.in/trademark-well-known/

https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks

https://www.obhanandassociates.com/blog/criteria-for-determining-well-known-trademark-in-india/

http://www.legalserviceindia.com/legal/article-3125-well-known-trademark.html