Well Knownness of a Trademark – Part II – Popularity among Substantial Segment of Public

As discussed in our previous post, for determining the well knownness of a trademark, the claimant of the well knownness is required to prove beyond reasonable doubt that the mark enjoys high reputation among a substantial segment of consumers, with respect to the goods and/or services to which said mark is applied. In order to conceptualize the principle behind the well knownness of a trademark, it is important to understand the legal interpretations of the terms ‘substantial segment of consumers’ and ‘relevant consumers’.

Although there is no hard and fast rule regarding what constitutes substantial segment of consumers, analysis of case laws of various jurisdictions indicates that, in order to consider a trademark as well known, the mark should be known among 75 to 90% of relevant public.

The Chancery Division in the judgment reported as “British Sons Vs James Robert – 1996 (RPC) 281 (page 305-306), while examining the issue of acquired distinctiveness of a descriptive trademark “TREAT” has held that mere extensive use is not enough. It must be shown that the mark has really become accepted by a substantial majority of persons as a trademark and has become a household word. Even if 60% of the purchasing public recognize the word as a trade ark, that is not sufficient. Such recognition must be amongst at least 90% of the purchasing segment of public. The Applicant has miserably failed to produce on record any such evidence.

The European Court of Justice in BOTOX Case (Joined cases T-345/08 and T-357/08) confirmed that “…the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trademark of 75% among the specialized public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market.”

Therefore, an entity claiming well knownness shall prove that its mark is known among more than 70% of the relevant public, with the help of cogent and indisputable evidences including but not limited to sales turnovers, sales invoices, advertisements and promotional expenses, promotional activities and the range of business circles in which the products under the said mark are actually circulated.

The term “relevant public” indicated herein does not mean that the public at large should be aware of the usage of the mark. Instead, the person claiming well knownness should prove beyond doubt that the mark is known among the consumers and business circles of the goods and services to which the mark is applied. For example, for the mark HEDGE to claim the “well known” status among security investors, they are not required to prove that the mark is well known among the public at large. On the contrary, they have to prove that they have a renowned reputation among investment bankers.

In our next posts, we would be discussing other factors involved in determining well knownness of a trademark.

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