Summary
This post examines the statutory factors under Section 11(6) and 11(7) of the Trade Marks Act, 1999 that guide the Registrar in determining the well knownness of a trademark. It also outlines the considerations that should not be taken into account as per Section 11(9). The analysis is supplemented by judicial interpretation, particularly the Delhi High Court’s observations in Tata Sons Ltd. Vs. Manoj Dodia and Ors., which provide additional criteria for assessing well known status. A collective reading of statutory provisions and case law establishes that each jurisdiction requires cogent evidence for a mark’s well known status. Subsequent posts will discuss each factor contributing to well knownness in detail.
Statutory Framework
The Trade Marks Act, 1999 sets out a structured statutory framework for determining whether a trademark qualifies as a well-known trade mark. Section 11(6) and Section 11(7) identify the factors that the Registrar of Trademarks shall take into account in making that determination. Section 11(6) prescribes specific factors for assessing well knownness, while Section 11(7) elaborates the criteria for evaluating those factors.
Factors Under Section 11(6)
Section 11(6) states that – The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including –
(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) 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;
(iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well known trademark by any court or Registrar under that record.
Criteria Under Section 11(7)
Section 11(7) states that “The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account –
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.”
Negative Criteria Under Section 11(9)
Section 11(9) of the Trade Marks Act lists the factors that the Registrar shall not take into consideration while determining well knownness. These are:
- The trademark has been used in India;
- The trademark has been registered;
- The application for registration of the trademark has been filed in India; or
- The mark is well known to the public at large in India.
Judicial Interpretation: Tata Sons v Manoj Dodia
The factors provided by the Trade Marks Act, 1999 for determining the well knownness of a mark are not exhaustive in the sense that the Registrar is not restricted solely to those listed factors. The Honorable Delhi High Court in Tata Sons Ltd. Vs. Manoj Dodia and Ors., (MANU/DE/0980/2011) discussed at length the factors to be considered in such a determination. The Delhi High Court observed that, unlike the factors applicable to the Registrar, the Trade Marks Act, 1999 does not specify the factors which the Court needs to consider when deciding well knownness.
The relevant paragraph from that decision reads as follows:
“13. Trade Marks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including
- The extent of knowledge of the mark to, and its recognition by the relevant public;
- the duration of the use of the mark;
- the extent of the products and services in relation to which the mark is being used;
- the method, frequency, extent and duration of advertising and promotion of the mark;
- the geographical extent of the trading area in which the mark is used;
- the state of registration of the mark;
- the volume of business of the goods or services sold under that mark;
- the nature and extent of the use of same or similar mark by other parties;
- the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry; and
- actual or potential number of persons consuming goods or availing services being sold under that brand.
A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction.”
Combined Reading of Sections 11(6) and 11(7)
On a collective reading of Section 11(6) and 11(7) of the Trade Marks Act, 1999, together with the factors identified by the Delhi High Court, it becomes clear that a claimant of well-known status must submit cogent, clear and convincing evidence to establish each of the aforesaid factors independently in each jurisdiction. The fact that a trademark is well known in one jurisdiction does not give rise to a presumption of well knownness in another jurisdiction.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.