BENEFITS OF WELL KNOWN TRADEMARK

BENEFITS OF WELL KNOWN TRADEMARK

Well-known trademarks in India enjoy a myriad of benefits, playing a pivotal role in the competitive landscape and legal framework. Following are some key advantages that come with the recognition of a trademark as "well-known" in the Indian context.

PROSECUTION BASED BENEFITS:

Some key benefits of a well-known mark, provided by the Trade Marks Registry under the Trademarks Act, 1999 are:

i.????????? Protection and benefits rendered by Registrar: The Registrar while considering an Application for registration of a trademark or while considering an Application for opposing a trademark is duty bound to protect a well-known trademark against identical or similar trademarks as per Section 11(10)(i) of the Trade Marks Act, 1999 that reads as follows,

?“While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall (i)protect a well-known trade mark against the identical or similar trade marks;”

?The Registrar while doing so also helps the proprietor of a well-known mark monetarily; the Registrar by taking suo motto appreciation of your well-known mark objects/refuses impugned marks thus saving time, money and efforts of the proprietor of a well-known mark that would have been accorded to oppose every such mark.

ii.????????? Honest use not a defense against well-known marks: Another benefit of a well-known mark is that a proprietor of an infringing mark cannot claim the defense of honest use as per Section 12 of the Trade Marks Act, 1999 that reads as follows,

“In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.”

Section 12 of the Trade Marks Act, 1999 states that in case of honest use the Registrar may in its opinion grant registration to identical or similar trademarks in respect of the same or similar goods or services. However, while considering an application against a well-known mark a proprietor cannot claim such a defence as it is presumed that such an applicant was aware about the well-known mark. In such circumstances wherein honest use defence is claimed by the infringer then a dishonest/malafide intention is presumed. Consequently, a proprietor of well-known mark does not generally bear the brunt of the “honest use defence”.?

?

iii.????????? Apply for the removal of infringing mark: The proprietor of a well-known mark can file an Application for rectification with the Registrar to get an infringing mark removed from the register as stated under Section 57(1) of the Trade Marks Act, 1999) that reads as follows:

“On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.”

Such an Application is highly likely to succeed due to the well-known status of your trademark.

?iv.????????? No renewal fees for well-known marks: The Proprietor of a well-known mark should be unconcerned about the repercussion of non-renewal i.e., removal of mark from the register due to non-renewal after a period of ten years. The Trade Marks Act, 1999 does not require renewal of a well-known mark. This is because of the goodwill attached behind well-known marks. The goodwill attached to a well- known mark is a sufficient indicator to hold the well-known mark at a higher pedestal as compared to ordinary marks.???

?v.????????? Global Recognition: Enforcing well-known classification of the trademark enhances the brand's reputation and recognition not only within domestic market but also internationally. This can be particularly advantageous for business expansion plans or more profitable in jurisdictions wherein a presence already exists. India being one of the 195 member countries of the Paris Convention (1967) and one of the 164 member countries of the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1995 incorporated the provisions of relating to well-known marks.

?

The Paris Convention (1967) via Article 6bis that reads as follows,

“(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

?

and the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1995 via Article 16.2, that reads as follows:

?“(2) Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark”.

wherein member countries are urged to afford certain protections to well-known marks, regardless of whether they are registered or not. Specifically, member countries must provide the means to refuse or cancel the registration, and prohibit the use, of a well-known mark when applied for or used by an unauthorized party for identical or similar goods, when its use or registration would likely cause confusion.

?

LITIGATION BASED BENEFITS:

The classification of a trademark as well-known provides it with an array of protections via the Courts, namely: ?

??i.????????? Institute an infringement suit: The proprietor of a well-known mark can institute an infringement suit against anyone who is found to be using identical or similar mark or a mark which is used in relation to goods or services which are, similar or even dissimilar to your mark as stated under Section 29(4) of the Trade Marks Act, 1999 that reads as follows:

“(4)A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”

?The same has been observed in the case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan AIR 1994 Del 2369 the Plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark “BENZ” for selling its undergarments. The Delhi High Court in deciding the case acknowledged the mark of the Plaintiff as a well-known trademark and hence restrained the Defendant from using the impugned mark by stating that there was no valid reason as to why the Defendant would adopt the name “BENZ”, which is associated with one of the finest engineered cars in the world and has a trans-border reputation and goodwill.

?ii.????????? Institute a permanent injunction suit: The proprietor of a well-known mark can also institute a suit for permanent injunction against an infringing mark across all classes of products and services as per Section 11 (2) of The Trade Marks Act, 1999 that is reiterated below:

“A trade mark which

(a)is identical with or similar to an earlier trade mark; and

(b)is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.”

?This was observed in the case of Rolex SA v. Alex Jewellery Pvt. Ltd 2009 (41) PTC 284 (Del.), the Plaintiff (Rolex) filed a case against the Defendants (Alex Jewellery) who were dealing with artificial jewellery, and using the trade name “Rolex” associated with the Plaintiff. The Delhi High Court held that the Plaintiff’s trade mark was a well-known trademark, and since the general public using watches recognized the trade name Rolex and the Defendant using the same name for artificial jewellery would create confusion in the minds of the general public and might create an assumption that the goods are those of the Plaintiff Company. Hence, the Court granted injunction against the use of the trade name Rolex by the Defendants.

?iii.????????? Few prominent judicial pronouncements that underscore the efficacy of well-known marks in across class as well as same class suits, thereby conferring a benefit to proprietors acquainted of their brand's intrinsic value are:

?

a.???? Bajaj Electricals Limited versus Metals & Allied Products and Anr.

Citation: AIR 1988 BOM 167

Use of the mark “BAJAJ” by the Defendants for domestic appliances and kitchen utensils was restrained by the Bombay High Court through an injunction as the mark “BAJAJ” owned by the Plaintiff used for electrical goods and electronic devices/appliances has become a well-known mark and has transcended its category of goods and services.

b.???? Kamal Trading Co. and Others versus Gillette U.K.?Ltd.

Citation: 1988 (8) PTC 1 (BOM)

The Appellant was found to be using the Respondent’s “7 O'CLOCK” mark in relation to tooth brushes. The Bombay High Court restrained the Appellant from using the mark “7 O'CLOCK” by acknowledging the trans-border reputation of the Respondent and well-known character of Respondent’s mark. The Court observed that the goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and even on digital platforms acquiring wide reputation.?

c.????? Indian Hotel Company Limited versus Grand Vivanta Vacation Pvt. Ltd.

Citation: CS (COMM) 560/2022

The Delhi High Court permanently refrained the Defendants (Grand Vivanta Vacation) from using the word “VIVAN” or any other word with or without prefix or suffix in respect of any of its resorts, hotels, restaurants or any other combination for its hospitality services, resorts, hotels, restaurants or any other related services which is deceptively similar to that of the Plaintiff (Indian Hotel Company Limited) Tata’s well-known mark “VIVANTA” in respect of hospitality services including hotels and resorts, both in India and abroad.

?

OTHER BENEFITS:

• The ability to prevent dilution and unauthorized use is a critical advantage for businesses with well-known trademarks. Dilution occurs when the distinctive character or reputation of a well-known mark is weakened by the unauthorized use of a similar mark. Well-known trademarks are granted protection not only against direct competitors but also against potential threats from unrelated sectors. This comprehensive defense helps maintain the integrity and exclusivity of the brand.
• Consumer trust and brand loyalty are intricately linked to the recognition of a trademark as well-known. Well-known trademarks are synonymous with quality, reliability, and a positive consumer experience. Consumers often make purchasing decisions based on the reputation associated with a well-known mark, leading to increased brand loyalty. This trust factor can significantly impact a company's market share and long-term success.
• The financial implications of a well-known trademark are noteworthy. A strong and well-recognized brand can command premium pricing for products and services. Consumers are often willing to pay a premium for the assurance of quality associated with a well-known mark. This pricing power contributes to the overall economic value of the business and enhances its competitiveness in the market.