Recent Developments & Principles governing Well-known Trademarks

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Have you ever wondered why well-known trademarks are given or accorded a wider protection? To answer that, you may read our previous post on  ‘An insight into Well-known Trademark’. Now, lets look at the Recent Developments in the Well-known trademark regime and what are the principles that govern them with the help of cases.

Recent Developments

Prior to the Trademark Rules 2017, the requirement for getting a trade mark declared as a well-known one was only by way of legal proceedings i.e, they were determined as per the judicial pronouncements and observations by various Indian Courts and the Tribunals.
But post/after the coming of Trademark Rules 2017, a new and fresh method of declaring marks as well-known was introduced which includes filing of an application by any trade mark owner under Rule 124 in Form TM-M thereby requesting the Registrar to declare a trademark as ‘well-known’. This new process was comparatively easier and less expensive than the one existed during the pre-amendment period.

Filing Procedure – Trademark Rules 2017

  • Form TM-M – Application u/R 124
  • Fee : 1,00,000 via E-filing (Physical Filing – Not allowed)
  • Relevant Documents Needed
    • Statement of case
    • Evidence in support of the applicant’s rights and claim (including advertisement and publicity, annual sales turnover, evidence of knowledge and recognition of the trademark in India, Overseas, etc.)
    • Details of successful enforcement of rights (if any)
    • Copy of the Judgment of any Court in India or Registrar of Trademarks (if any)
    • Size of the document submitted along with statement of case as evidence + supporting document – resolution of 200 X 100 dpi on A4 size papers – PDF format – total file size less than or equal to 10 MB.
  • Then the office will consider the Applicant’s claim on the basis of aforementioned documents submitted to the Registry.
  • Then Examination of the Application will be conducted followed by publication.
  • Then comes the filing of Objection (if any)
    • Copy of the said objection shall be communicated to the Applicant for the purpose of receiving comments on the same within stipulated time.
    • Then the Office will communicate the decision in respect of the objections to the parties concerned.
    • And then the final decision of the office will be communicated to the Applicant of the mark.
  • If the mark finally gets determined as well-known, then the same will be notified in the Trade Marks Journal and shall also be included in the list of well-known trademarks which will be made available on the official website of the Registry.

In the case of Christian Louboutin v. Pawan Kumar, the claims considered by the Court in support of the reputation of the trademarks are as follows:

  • “the Plaintiff’s status as a well-known luxury brand in over 60 countries;
  • extensive and continuous use of the trademarks since 1992;
  • knowledge of Indian customers of the trademarks;
  • the Plaintiff’s status as the sole licensor of the trademarks and several successful enforcement actions in the past;
  • extensive promotion of the trademarks in India;
  • the Plaintiff’s extensive internet presence;
  • the accessibility of the Plaintiff’s website in India and its role in making Indians aware of the Plaintiff’s trademarks and products; and
  • awards and accolades received by the Plaintiff for products sold under the trademarks.”

Delay in laches in filing the opposition

There is another circumstance where in which the well-known trademark may not be protected. And this happens when there is a delay in laches in filing of the opposition. This is mainly based on the latin maxim ‘Vigilantibus Non Dormientibus Aequitas Subvenit’. This maxim simply means that equity aids the vigilant alone and not the ones who plainly sleep over their rights. It in fact refers to the unreasonable delay that occurs in enforcement of a legal claim as a right. Hence in such a situation, the other party may claim that the person who invoked the suit had in turn been “sleeping over his rights” and thereby such a right is no longer exists or is available to him since the same is barred by laches. Since the doctrine of delay and latches is a principle of equity it provides that one who comes to equity must in turn come with clean hands i.e, for raising the defense of delay and latches, there exists a simultaneous reciprocal duty on the defendant as well for establishing itself to be an honest concurrent user of the said mark in question. This principle has been well enunciated in the case of Khoday Distilleries Limited (now known as Khoday India Limited) v The Scotch Whisky Association, wherein which the Hon’ble Supreme Court had observed that the other parties did not have any reason for adducing as to why they did not actually pursue the case against the Appellant for a lengthier time span of fourteen years even when they were aware of the existence of registration of the said trademark in favour of the Appellant.

Transborder Reputation

Another concept associated with the well-known trademarks is the concept of Transborder Reputation. With the rapid digitization and internet developments, there has been extensive advertising of brands/marks which in turn led to the blurring of the actual International geographical borders and thereby the reputation associated with the said brand/mark transcended those geographical barriers & got overflowed into the markets of various other countries even when they did not hold any actual business there in those countries. This concept has been well enunciated in the case of N.R. Dongre v Whirlpool Corporation wherein which the Court held it to be a well-known mark though it did not hold any actual business in the country at the time of the suit. The Court did so by recognizing that the vast global reputation of the company was actually spilled over India due to its extensive advertising via various International magazines that were circulated in India.

Lately, the Courts have differed from this stance sought substantial evidence to show that a mark has acquired substantial trans-border goodwill in India as well even if it already has acquired a huge good will in other jurisdictions. The Supreme Court in Toyoto Jidosha Kabushiki Kaisha. v. M/S Prius Auto Industries Ltd. And Ors. considered Defendant’s ‘territoriality principle’ and held that once an action of passing off is brought in, Claimant has to establish his goodwill in the jurisdiction in which he claims that Defendants are trying to pass off their goods under its brand name, the Claimants are required to prove possibility of confusion and not actual confusion in public. The Claimant should show substantial evidence to establish that the mark has acquired good will in India as well.

Doctrine of Dilution

Then as discussed earlier there exist another concept known as the dilution of well-known trademark. Dilution reduces/weakens a mark’s ability to clearly differentiate one origin of goods or services from that of the other. The Doctrine of dilution is embodied u/s 29(4)(c) of the Trade Marks Act 1999 which provides that any unfair and undue usage of registered mark having reputation in India which will be detrimental to the distinctive character of the said mark, will in turn amount to infringement of that mark.
Also it is to be noted that unauthorized and undue third party usage of a well-known mark in relation to related/unrelated goods or services would mean nothing but poor customer related services and most importantly sale of inferior quality products. And this in turn result in the dilution of goodwill and reputation of the well-known mark.

Conclusion

Hence well-known trademark is in fact a privilege for its registered owners since it provides an exclusivity of use and wide extent of protection to the registered proprietor. In other words, it can be said that the well-known trademark is a main marketing tool in business which accords a very special recognition to both the rightful proprietor as well as the concerned goods/services and also paves way for immeasurable opportunities to the companies.
But at the same time special caution has to be taken to make sure that the well-known status is accorded to the marks which fit for the same so as to avoid misuse of the said status. This is because a well-known status can act like a straitjacket thereby restraining anyone and everyone from using the said well-known mark to both related as well as unrelated goods. Also the Registrar who is the ultimate deciding authority must ensure due care and caution while handling the well-known trademark applications so as to avoid any kind of abuse of power vested solely in the hands of the Registrar.


About the Author

Authored and compiled by Divya S. (Intern, BananaIP Counsels)

This post is brought to you by the Consulting/Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. If you have any questions, or need any clarifications, please write to contact@bananaip.com with the subject: Trademark

Disclaimer: Please note that the news bulletin has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the news published in the bulletin. You may write to contact@bananaip.com for corrections and take down.

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