RECENT DEVELOPMENT IN WELL KNOWN TRADEMARK: A CRITICAL ANALYSIS
One of the most important and substantial intellectual properties are constituted by trademarks. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Trademarks are industrial property which help the original owners in avoidance of duplication and confusion. One important classification in the realm of trademark sector are well-known trademarks. Section 2(zg)of Trademark Act, 1999 defines a well-known trademark as 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. For any player looking to compete on a worldwide scale in developing a powerful commercial brand, exclusive rights to trademarks and trade symbols have become more important. This led to the introduction of well-known trademark whereby various firms with large recognition and brand name were enlisted as well-known trademarks so as to secure their interests in a fair and reasonable manner. Well-known trademarks have their goodwill and reputation protected across the country and across categories of goods and services, in contrast to other trademarks whose goodwill and reputation are restricted to a set designated geographical region and to a certain range of items. Some examples include Suzuki, Puma, Zee.
There have been various recent developments in the sphere of trademark law. One such development with the advent of Trademark Rules 2017 is the introduction of a new procedure which gives the power to the Registrar of trademarks to proclaim a particular trademark as a well-known trademark. Earlier, a trademark was legally recognized as “well-known” through judicial pronouncements through courts and tribunals. This meant that one had to enter litigation with the aim to grant the status of well-known trademark by essentially going to court.
While the legal recognition of “well-known” trademark is considered to be of colossal significance, the process of obtaining such status was a tedious one.
But now that the Trademarks Rules 2017 have been implemented, trademark owners can request well-known status. In general, the elements that the Registrar must consider, among other things, to identify a well-known trademark are broken down in Sections 11(6) through Section 11(9) of Trade Marks Act, 1999. The Registrar will consider a number of factors when determining whether a mark is well-known, including geographic scope, length of time for which it has been marketed, and recognition among the relevant segment of the public. Moreover, Rule 124 of Trade Mark Rules, 2017 gives a new dimension to the procedure of getting a well-known trademark recognized in law. It vests adequate power in the hands of registrar so as to determine a well-known trademark. A TM-M request must be submitted in order to have a mark recognised as a well-known trademark. According to Section 11(9), a mark need not be registered, have a pending application, or have been used in India in order to be deemed a well-known trademark. But after reading the aforementioned Form, it becomes clear that in order to submit the application, an Indian application number is required, without which it appears that the application cannot be submitted.
Current Judicial Position
In Daimler Benz Akietgesellschaft v. Hybo Hindustan, the plaintiff requested an injunction against the defendants for utilising the plaintiff’s well-known emblem (the roundel logo) and the phrase “Benz.” In this case, the court issued an injunction against the defendants who were using the contested marks to market their clothing, finding that the plaintiff’s mark was widely recognised due to its international reputation and goodwill.
The case of Whirlpool Co. & Anr. v. N. R. Dongre is another instance in which the court issued an injunction. In this instance, Whirlpool, the plaintiff, did not go on to register their trademark in India. However, the Plaintiff had a global name thanks to their use and magazine ads in other countries, and they had sold their machines at the US embassy in India. The Defendant began utilising the disputed mark on its washing machines in the meantime. Following that, the Plaintiff filed a lawsuit against the Defendant, and the Court ruled that the Plaintiff had a
“transborder reputation” that was well-established in India and that the Defendants were thus prohibited from exploiting it for their products.
While it is a welcome change to have recent amendments in Trademark Rules, 2017 in view of well-known trademarks, there are certain loopholes and criticism as well. In the Act, there is an ambiguous definition of a “well-known mark”, thereby opening the room for misinterpretation. A clear definition of what constitutes a well-known mark is lacking in the section of the law that deals with enforcing well-known marks. Therefore, the lack of suitable rules on well-known marks for enforcement operations reduces the protection provided to those marks.
Indian law grants established trademarks enhanced protection because it recognises their inherent value. No matter how long a trademark has been, its enormous amount of exposure is a distinguishing quality of famous trademarks. In an effort to distinguish and strengthen their businesses, trademark owners have been known to turn to using showy titles, numbers, and other identifiers.