WELL-KNOWN TRADEMARK AND HONEST AND CONCURRENT USE: AN ANALYSIS IN INDIA AND UNITED STATES OF AMERICA.

Introduction

The development of trademarks traces back to times when competitive market economy was escalating, and in order to identify their product, the manufacturers started associating their products by certain symbols, marks, to separate their goods from similar goods. So, in this way trademark acquired its reputation.

The term ‘well known’ with respect to trademarks finds its significance from the term ‘reputation’ it’s recognition for the first time can be traced in the age-old case of JG v Stanford. After that people started connoting the reputation with the economic value of the goods and well-known trademark got its recognition.

Section 12 of the Trade Marks Act, 1999 provides registration of trademark if the usage of the mark is honest and concurrent. The clause, “whether any such trademark is now enrolled or not” in enclosure makes it clear that the exception applies to unregistered mark likewise.

In John Fitton & Co five factors were entailed for honest concurrent user defense. These are: 

1. The extent of use with respect to time, quantity and the area of the trade

2.The degree of confusion likely to arise from the resemblance of the marks 

3. The honest and the concurrent use

4.  If any instances of confusion have been proved, and

5. The inconvenience which would be caused if the mark were registered, subject if necessary to any conditions and limitations.

The matter that needs to be meticulously researched is the intersection area of the well-known trademark and the honest and concurrent use of trademark.

In the case of Indian Shaving Products Ltd v Gift Pack, the Court said due to the advancement of technology the reputation, goodwill spread at a massive pace. This would make it difficult to apply the defence of honest concurrent user because it will require a great deal of evidence to prove honesty. 

A joint resolution on protection of well-known marks was adopted by WIPO in the year 1999 to protect well-known marks. The resolution was adopted to present misuse and infringement concerning well-known trademark. wherein various factors to determine a well-known trademark was ascertained.
 

India being a member of World Trade Organization, adopted these factors and enshrined it in clause 6 of Section 11 of the Trademarks Act. These determining factors includes –

1. “Knowledge with respect to the mark in relevant sections of the public;

2. Time period, scope and geographical area in which the trademark is used;

3. Duration, extent and geographical area in which the trademark is promoted with respect to the goods and services to which it applies;

Registration or application for registration of the trademark to the extent they reflect recognition of the trade mark;

4. Record of successful enforcement of the trade mark including the record stating that the trademark has been recognized as well known by any court”.

To understand well-known trademark and honest concurrent use the following case law have been       discussed:

Raymond Limited v. Raymond Pharmaceutical Pvt. Limited

The Plaintiffs were incorporated in the year 1913 as Raymond woolen Mills Limited. Presently, known as Raymond Limited. According to them they are the market leaders of manufacturers of textiles. They are also in the business of personal care products, air charter and many more.

The record of successful enforcement of the rights in that trade mark including the trademark has been recognized as well known by any court or Registrar.

The plaintiffs claim interest in the mark. The mark was adopted by plaintiff more than 80 years ago, and so it constitutes an essential feature of the corporate name of the plaintiffs.

Knowledge about the mark in relevant sections of the public

The Plaintiffs claim 'Raymond' is a famous household mark with huge reputation and goodwill. Raymond is written in broad and highlighted letters, and is an original artistic work as under the Copyright Act, 1957. Moreover, also registered under the Act with effect from, 20th December, 1993. The Plaintiffs also claims that they have registered the mark in numerous classes under the Trade Marks Act. The Plaintiffs asserted that with time they have acquired the status of very “well-known mark”. 

The duration, extent and geographical area with respect to the promotion of goods and services to which it applies

It is because of their quality that have earned them huge reputation and goodwill. The plaintiff’s sales are reported around Rs.218 Crores. The Plaintiffs says he has spent around Rs.68.58 Lakhs in 2014 for advertising and promoting their products. 

Defendants, claim of adoption of the mark 'Raymond' as honest and bonafide.

The defendants, on the other hand, are in the pharmaceutical business and it is the plaintiffs' case that the defendants have unauthorizedly used the mark in their domain name www.raymondpharma.com and E-mail address info@raymondpharma.com for its business. Moreover, according to plaintiff other than committing the tort by passing off the defendants are taking benefit of the goodwill and reputation of the mark and is likely to cause confusion and deception amongst the public.

However, according to the defendants, adoption of the mark 'Raymond' in their domain name is honest and bonafide.

The chances of confusion resulting from the similarity of the applicant’s and opponent’s trademarks

The domain name was mentioned as www.raymondpharma.com. The word ‘pharma’ entails short form of ‘Pharmaceuticals’. Defendants, asserted that the mark 'Raymond' is commonly used even before the plaintiff adopted it for example watch brand Raymond Weil in India (1980).

The defendants contended that they have started using the word 'Raymond' in their corporate name and also adopted the same for health-care products. The defendants contend that the word 'Raymond' means protection and is a suitable name for a pharmaceutical company.

According to the defendants, Plaintiffs' domain name is www.raymondindia.com or www.raymond.in whereas the Defendants' website is www.raymondpharma.com which is different in respects of - visually, phonetically and structurally. The word 'pharma' draws attention towards the difference between the two domain names and also the customers, goods and business of the defendants are distinct from those of the plaintiff and so no scope for deception, confusion.

well-known trademark and its protection in relation to dis-similar goods

In Royal Bank of Scotland in paragraph 54 the Delhi High Court observed that a well-known trademark can be protected even in relation to dis-similar goods used by the defendants and to prove a case of infringement of trade-mark, the plaintiff is required to show that essential features of registered trade-mark has been taken from the plaintiff's registered trade-mark.

For establishing infringement, the Plaintiff's mark must be registered under the act and also the defendant's mark must be deceptively similar and its use was likely to deceive and cause confusion. Once, it is established that the defendant's mark is closely, visually and phonetically similar then there is no requirement of further proof.

In James Chadwick & Bros. Ltd. v/s. The National Sewing Thread Co. Ltd important observations were made. Firstly, if the trade-mark of which registration is sought is having same distinguishing feature or secondly, contains the essential feature or thirdly, carries the same idea as the prior mark, then registration can be denied. Adding to it a lot also depends on the question as to how a purchaser a man of ordinary intelligence    would react to a particular trade-mark. plaintiff

Comparative Advertising 

The case of Barclays Bank is important to note, here it was declined to restrain the Royal Bank of Scotland from using the name RBS Advanta Visa Card, was on the rationale that the usage of name was not infringing the plaintiff's trade-mark, (BARCLAYCARD) but only comparison was made to the card of plaintiff.

 The Hon’ble High Court held that any use apart from honest practice shall be treated as infringement of trade-mark if the use of the mark takes unfair advantage or repute of the mark.

It was further emphasized that comparative advertisement, is permitted so long as the usage of mark by competitor is honest. Through comparison if public is getting known of the relative merits of the competing goods and services and using the trade-mark to distinguish goods and services then prohibition of comparative advertisement should not be permitted.

Secondly, no infringement will take place of registered trade-mark provided if not in accordance with the honest practices. To test honesty, the test is objective and that if use is considered honest by members of a reasonable audience. Thus, the use of the mark should be to permit the defendant to take advantage.

Provided if it does not cause detriment to the mark and inflict harm which is above the level of  de minimis. In the instant case, it was asserted by virtue of Section 29(4) (c), that the plaintiff's mark is a well-known mark, and the use of the mark will cause unfair advantage.

In the case of Audi-Med, it was said if it is established that the defendant's domain had got the advantage of more than minimum effect (de minimis effect) on the distinctive character of the earlier mark, then that shouldn’t be permitted.

Analyzing all these things, the court stated it does not appear to be in bad faith and is just usage of its corporate name to identify its own domain space.

It was held that by analyzing usage of the domain name in the facts here it can be said that it is neither to take unfair advantage nor is it detrimental to the distinctive character. 

United States America

The well-known marks doctrine, under Article 6 bis of the Paris Convention, ensures that a mark that is well known in a country is given protection even though if it is not used or registered there.

However, US trademark laws has not been amended to expressly incorporate the doctrine. As a result, there is no consensus in US civil courts as whether the well-known marks doctrine applies.

Well-known foreign marks find its mention under the Paris Convention for the Protection of Industrial Property (the "Paris Convention").
 

However, not all United States courts face a well-known mark claim issue. In 2004, it was held that well-known foreign marks are entitled to protection under federal law.On the other hand in 2007 Second Circuit decision, denied the existence of such protection. This has led to confusion regarding the protection in the United States for well-known foreign marks that have not been registered. 

The United States render protection under the Lanham Act. Although there lies some discrepancy in implementation.

Conclusion

The defense of honest and concurrent usage has got diluted over time. In Daimler Benz v. Hybo Hindustan, defendant was using the plaintiff's logo for which the later brought injunction. The court recognized plaintiff's logo as a well-known trademark on the rationale of trans-border reputation.

The impact of technology be it newspaper, media or online resources has given way to know and be aware about the goodwill of the trademarked goods (Indian Shaving Products Ltd. vs. Gift Pack), indicating that brands are now more global than local. 

It is important to notice trademark regarding educational institutions. What can be inferred is the tendency of courts to be lenient when it comes to adoption of a trademark/tradename regarding educational institutions in the application of honest and concurrent use.

For example, in the case of Goenka Institute of Education and Research v Anjani Kumar Goenka & Anr, the High Court upheld the defense of honest concurrent user. The Court held the following: that a student is not like a customer. They know about the standing of educational institutions and thus there would be no likelihood of confusion among the students.

Written by:

Kajal Priya.

4th year, NUSRL,Ranchi.