As its name suggests, a well-known trademark is a mark that is recognized by the majority of the world’s population and whose reputation is not limited to a specific geographic region or category of goods or services but is known worldwide. A well-known trademark is defined under section 2(1) (zg) of the Indian Trademark Act, 1999. It states “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 the 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.”[1] The Indian Trademark Registry publishes a list of all well-known trademarks in India, and twenty new trademarks were just added to this list in the trademark journal dated 15th August 2022, including SWIGGY, PAYTM, MAGGI, and NOKIA.
Furthermore, a trademark can be considered as a well-known trademark if it fulfills the criteria mentioned under section 11(6) of the Act. These determining factors includes—
- That the trade mark is well known to the public at large in India;
- The number of persons involved in the channels of distribution of the goods or services;
- The number of actual or potential consumers of the goods or services;
- The duration, extent and geographical area of any use of such trade mark;
- The business circle dealing with those goods or services.[2]
As previously stated, the title of a well-known mark does not come easily, and when it does, it comes with a number of advantages as listed below:
Even if the nature of the goods and services are different, no identical mark (as a well-known) can be accepted.
It is a well-known notion of the Trademark law regime that a similar mark might seek registration even if such mark already has an identical registered mark in a different class of products and services. However, with a well-known mark, no one can request to register a similar mark in any of the NICE classes.
In the landmark case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan[3], The Plaintiff was a manufacturer of Mercedes Benz automobiles, whereas the Defendant sold underwear under the mark BENZ. The underwear belongs within NICE class 25, which is distinct from the plaintiff’s products and services, which deal with automobile production. However, while acknowledging the fame of the plaintiff’s mark, the court prohibited the defendants from utilising the name ‘BENZ’.
An exception to grounds of refusal
A well-known trademark is always exempt from objections under sections 9 (absolute grounds of registration) and 11(relative grounds of refusal). Section 9 of the Act, for example, prohibits the registration of a family name or a geographical location name because these names cannot distinguish the products and services from those of others. On contrary, taking the example of trade names MAHINDRA & MAHINDRA[4] and TATA & SONS[5] or taking the example of INDIA GATE and DELHI PUBLIC SCHOOL exemplifies the advantageous position of a well-known trademark.
Easy registration even if the mark is unconventional
Most unconventional trademarks that have been registered in India have achieved so on account of their renown. In registering an unconventional trademark, the applicant’s goodwill and well-knowingness of the mark are essential. For instance, protecting a single color trademark in India is difficult, but the Delhi High Court has protected the ‘red sole’ of Christian Louboutin heels.
BY- EKTA DIXIT
JUNIOR ASSOCIATE AT BASKARAN & ASSOCIATES
[1] Section 2(1)(zg), Indian Trademark Act, 1999
[2] Section 11(6), Indian Trademark Act, 1999
[3] AIR 1994 Del 2369
[4] 2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012
[5] 2001 PTC 562