This post was first published on June 30th, 2014.
Generally, trademark protection is limited to the protection against unauthorized use of a trademark on identical or similar goods or services. The deceptive similarity and likelihood of confusing elements are not applicable in cases where an alleged conflicting mark is used in respect of dissimilar and/or unrelated goods and services. For example, the use of the mark KODAK for hotels or catering services would not amount to trademark infringement under the provisions of Trademark law.
However, this is not the case in all situations. Article 6 Bis of the Paris Convention for protection of Industrial Property specifically requires all signatories to develop a mechanism to protect the well known and/or famous trademarks.
Section 2 (1) (zg) of the Trademarks Act, 1999 defines the term well-known marks as:
“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 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.”