The Changing Perspective Of Well-Known Trademarks In India

The innovative advertisements of famous trademarks we come across remind us of the image they have created in our minds and the quality of the respective products or services they reflect. Millions are spent by the owners of such marks to build their reputation and maintain their popularity in this competitive globalised world.

At times, proprietors of such trademarks spend a large amount of money to prove that their marks are indeed well-known or famous before a competent court. The incentive to establish a mark as well-known is, but obviously, to strengthen the IP protection especially against malicious infringers. Primarily, what is expected by the owners of famous marks is that their marks are not copied, identically or similarly, in respect of their own goods and services of interest or in respect of other goods and services, by intentional and opportunist persons to derive illegal profits. The flip side from Indian perspective was that establishment of well-known trademark could be done only through adversarial proceedings before a court.

The recent Indian Trade Marks Rules 2017 which came into effect from 6 March has attempted to intertwine the modern economic philosophies of ‘Ease of doing business in India’, ‘Digital India’ and ‘Start up India’ initiatives of the Indian government. The new rules offer a ‘complete digital’, ‘expedited processing’ and ‘easy to use’ experience of trade mark registrations in India. Among the many new features in the rule is the provision for a proprietor of a famous mark to directly apply online to the Registrar of Trade Marks for determination and declaration of such mark as well-known.

The provisions of protection of well-known trade marks in India were present in the previous avatars of the Trade Marks Rules, but the process of declaring marks as well-known was at the sole discretion of courts or tribunals, resulting out of a full-fledged contested litigation or legal proceeding. This implied that the proprietors of well-known trademarks had to approach courts for relief, once their marks were infringed by an infringer or passed off as their own by an unauthorised user. While the existing process of determining a mark as well-known by courts and tribunals will continue, potential proprietors of well-known trademarks now have a potent option to apply directly to the Indian Trade Marks Registrar for determination and declaration of their mark as well-known.

The Indian Trade Marks Act, 1999 has defined well-known trade mark as a mark which has become so in relation to any goods or services, 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.

Thus a well-known trade mark is capable of distinguishing itself from an ordinary trade mark. While any established trade mark may be known in its limited category of goods and services in which it has build its goodwill, a well-known trade mark is known well to the substantial segment of the public, i.e., beyond the category of goods or services it deals with. The degree of reputation of a well-known trade mark is so vast that its knowledge and reputation has crossed the limitation of its actual goods or services to other unrelated goods and services. Therefore, declaration of a mark as well-known trade mark is of considerable importance to any business entity. More so when we consider the fact that India follows the NICE Classification of goods and services, which has as broad as forty-five classes. Classes 1 to 34 apply to varieties of goods while Classes 35 to 45 relate to diverse services.

The Trade Marks Act has prescribed sufficient grounds to determine a mark as a well-known trade mark. The related provisions have been prescribed in sub-sections 6 to 9 of Section 11 of the Act. It essentially provides that while determining a mark as a well-known trade mark, the Trade Marks Registrar has to take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark, including (a) the knowledge or recognition of the trade mark in the relevant section of the public, including knowledge in India of the mark; (b) the duration, extent and geographical area of any use of such trade mark; (c) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies (d) the duration and geographical area of any registration of or any application for registration of that trade mark under the Act to the extent they reflect the use or recognition of the trade mark; (e) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

While determining the relevant section of the public, the Registrar has to take into account (i) the number of actual or potential consumers of the goods or services; (ii) the number of persons involved in the distribution of the goods or services; and (iii) the business circles dealing with the goods or services, to which that trade mark applies.

Therefore, the law is clear that if a trade mark has already been determined as well-known in at least one relevant section of the public in India by any court or the Tribunal, the Registrar of Trade Marks has to consider the mark as well-known for its registration in India.

It is important to note that for determining whether a trade mark is well-known, the Registrar shall not require as a condition that the trade mark has been used or is a registered trade mark or even been applied for registration in India. Also, it is not necessary for the mark to be a well-known or a registered mark or a subject of a pending application in any country, other than India. Moreover, it is also not required for the mark to be well-known to the public at large in India.

The coming into effect of the recent Trade Marks Rules 2017 has eased the process of registering a mark as well-known, without going through the rigours of time-consuming and costly litigation proceedings, primarily in a court of law in India. Rule 124 provides that any person may apply to the Registrar on the prescribed Form TM – M along with the prescribed fees of Indian rupees 100,000, i.e., approximately US $ 1550, for determination of a mark as well-known. The request has to be accompanied by a “statement of case” along with relevant evidence and documents relied upon by the applicant in support of their claim. The Registrar will consider the eligibility of the applicant’s request on the basis of the provisions contained in sub-sections 6 to 9 of Section 11 of the Indian Trade Marks Act, 1999. Further, the Registrar is free to ask an applicant any other documents or evidence as he thinks fit while processing such request. Before determining a trade mark as well-known, the Registrar may invite objections from the general public. Any person who has any objection to the mark to be declared as well-known has to file his written objection to the Registrar within thirty days of the date of the Registrar’s invitation. Assuming that there is no objection from the public or unsustainable objection being rejected, the mark will be determined and declared as well-known by the Registrar. To inform the public of the inclusion of the mark as well-known, the mark will be published in the Trade Marks Journal. Also, the mark will be included in the database of well-known trademarks, maintained by the Registrar.

Until August 2015, there were 68 declared well-known trademarks, in the list maintained by the Indian Registrar of Trade Marks. As of 14 March 2017, the list of declared well-known trademarks in the official database has grown to 81. Among the 81 well-known trademarks, the Delhi High Court has declared 45 of them as well-known, while concluding various litigations initiated before it. Further, the Intellectual Property Appellate Board (the appellate jurisdiction of the Trade Marks Registry) has determined and declared 10 marks in the list as well-known. Only four of the 81 marks have been determined as well-known by the Registrar of Trade Marks while deciding proceedings before him.

The Registry’s database of well-known trade marks indicates that the first well-known trade mark (in the list) is “7 O’ CLOCK” for shaving razors. Such mark was recognised as well-known by the Bombay High Court (reported in 1998 PTC 288 DB) wherein the court has announced the mark “7 O’ CLOCK” as well-known and prohibited the use of such mark by another party in respect of tooth brush on the grounds of passing off. The last well-known mark in the list is “VIRGIN”, belonging to Virgin Enterprises Ltd, which has been declared as well-known by the Delhi High Court in Suit No. 2860/2011. Some of the other well-known marks in the list maintained by the Registrar of Trade Marks are AIWA, BAJAJ, BENZ, CATERPILLAR, WHIRLPOOL, HONDA, NIVEA, PHILIPS, PEPSI, RED BULL, YAHOO, AMUL, GOOGLE and SONY.

With the process for determining and declaring marks as well-known being eased and simplified in the new rules, it is expected that there will be numerous applications before the Registrar of Trade Marks for determination of marks as well-known, and we might soon expect a swell in the list of well-known trademarks in India. Certainly, it is an opportunity for potential applicants to have their marks accepted and declared as well-known in India so that their marks are protected from being infringed or passed off by any unauthorised person.

At the same time, the Registrar ought to follow a cautious approach while considering applications for determination of marks as well-known, since once a mark is declared so, it will preclude any other party from using such mark (or even similar to it) in respect of other goods and service. Generally, courts always scrutinise voluminous evidence and documents of interested parties and hear them before concluding a mark as well-known. Therefore, the Registrar has to consider all the relevant evidence and documents submitted by an applicant for a well-known trade mark as well as of any party who objects to it. Else, the new process will prove futile and lead to multiplicity of proceedings, particularly by the present and prospective users of same and similar marks, in their respective domains.

Bharat Prasad

Bharat Prasad is a senior intellectual property consultant in the I P firm Groser & Groser, located in Gurgaon, India. He holds master degrees in Science and Law. He was admitted to the Bar (New Delhi) in 2003 and is a registered Patent agent. He manages the trade mark portfolio of the firm and provides strategic advice to the firm’s clients on the selection, development and protection of their brands. In his core experience in IP law since 2003, Bharat has successfully prosecuted thousands of trade mark applications, opposition and rectification proceedings before the Indian Trade Marks Registry. He regularly appears for and argues before the Indian Trade Marks Registry and Intellectual Property Appellate Board. Bharat is also an elected Executive Committee member of Asian Patent Attorneys Association (APAA), Indian Chapter, since August 2016.