It's All In The Name
Since time immemorial trademarks have been used to simplify the identification process of a particular good or service as well as guarantee the value of the same. Such a mark acts as an informative mode of communication between the producers and the consumers. Due to increase in competition, brand owners have to invest a substantial amount of money on advertising through its various forms to make the target consumer base aware of the product as also building a reputation for their product nationally as well as globally.
“Trademark” and “Well Known Trademark” are one of the few which provides the platform of exclusivity, brand value enhancement and national and global recognition.
To understand what is a 'Well-known Trademark” we need to first understand what is a Trademark.
A trademark has been defined under Section 2(zb) of the Indian Trademarks Act, 1999 ("Act") as " mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and combination of colors." This is in line with the definition provided under Article 15.1 of The Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"). Famous trademark examples are Amazon, Google, Facebook. Thus a trademark can be a device, label, word, number, the shape of a good, heading and so on, but it must possess the following qualifications:
(i) It should be distinctive. The distinctiveness of a trademark must be assessed with the goods or services it is to be associated with.
(ii) It must not be deceptive,
(iii) It must comply with the protection requirements established by the law of the country where protection is sought.
Once a Trademark has been registered (to maintain the goodwill and uphold the reputation), the owner retains the exclusive right to the product and can object to the use of either identical or similar marks for similar goods or services so that consumers are not misled. The main functions of a trademark are :
Advertise the product
Guarantee the quality
Create an image of the product within the consumer base, so that they are not defrauded by similar products.
This apart "Trademark" holders have to shell out millions to acquire an "indisputable repute preserve the same and time to time prove before competent authorities be it a "Court of law" or a designated "Regulatory Body" that the product is worthy and compliant of all regulations as laid down under trademark guidelines.
Synonymous to the above, there also exists "Well- Known Trademark" which in concept is very similar but often carries more weightage and enhances the brand value of any Product, Company or Organization.
The statutory definition of a well-known trademark is provided under Section 2(1) (zg) of the Act 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", reiterated in the case of Bloomberg Finance LP v. Prafulla Saklecha & Ors., 2013 (56) PTC 243. The base of this definition can be found in Article 6bis of the Paris Convention, with subsequent expansion by Articles 16.2 and 16.3 of TRIPS.
Therefore, a “Well-Known Trademark” is simply a category under the broad umbrella of Trademarks but enjoys far greater protection. They are marks effortlessly recognized by a substantial part of the public due to the goodwill and reputation it has earned owing to its continuous and extensive use. For example- Kitkat, Infosys, Dominos, Odinil & Odomos etc.
Having deliberated on Trademark and Well-known Trademark above let’s now provide an insight into the potential advantages of “Well-known Trademark” and why is there such a rush amongst organizations/companies to acquire the tag in spite of all the procedural complexities and huge monetary investments. The importance of a well-known trademark lies in the following reasons:
Strengthens the "Intellectual Property Protection" quotient against infringers.
Adds commercial value and increases profitability for the owners of such marks.
Protection against misuse and infringement of the mark to make illicit gains out of the goodwill acquired by the well-known trademark.
Prevents a third party, involved in a different category of goods or services, from registering the mark. For example- Google is registered as a well-known trademark of Alphabet Inc. which means that the power to register the term 'Google' for any category of goods or services however diverse it may be lies only with Alphabet Inc. No other company other than Alphabet Inc. can register 'Google' as its trademark.
Further, it would not be out of place to record that a trademark can be established as a well-known trademark in India, only through adversarial proceedings before a Court of law. This exclusive right as obtained merits claims of punitive damages as specified more often than not by the Apex Court to prevent infringers from using such well-known trademarks.
In Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del.) the Court held that in Intellectual Property cases punitive and compensatory damages can be awarded by the Courts. The Court granted Rs. 5 lakh in the way of punitive damages and Rs. 5 lakh as compensatory damage to the plaintiff for the reason of infringement in the present case.
Determining factors for Well-known Trademarks
In the Indian context, certain criteria and factors need to be considered by the Registrar while determining whether a trademark is a well-known trademark or not. Section 11(6) lays down the requirements and test for a well-known trademark namely,
due to the promotion of a trademark, whether it has come to the knowledge or become recognizable in the relevant section of the public,
how widely used is the trademark in terms of duration, extent and area,
how long or to what extent and in which area the promotion (advertising or publicity or presentations included) of a trademark of the goods or services takes place.
for how long a trademark has been registered or any application has been filed, that reflects the recognition or use of the trademark.
how successfully the rights of a trademark have been enforced, in the context of the recognition of the trademark as a well-known trademark in a Court.
In Societies Des Produits Nestle v. Swaraj Industrial and Domestic Appliances, 2013(56) PTC 94 IPAB, the Court held that whether a mark qualifies as a well-known trademark, in a certain section of the public, or not is a question that is to be decided on evidence and deciphered from the facts and circumstances of each case. Rule 124 of Trade Mark Rules 2017 gives power to the Registrar to declare a trademark as a well-known trademark if an application, form TM-M, is filed before it.
In order to get recognition within a segment of the public, the Act lays down, vide Section 11(7), additional conditions that ought to be fulfilled, namely,
(i) Number of consumers of the good or service,
(ii) Number of people connected with the distribution of the goods or services,
(iii)The duration, extent and geographical area wherein such trademark is used,
(iv) The business circle, consumers, manufacturing and people that deal with such goods and services as held in Tata Sons v. Manoj Dodia & Ors. (CS(OS) No. 264/2008).
The Delhi High Court in the case of Indian Shaving Products Ltd. v. Gift Pack & Anr. (1998) PTC 698(Del) dealt with the duration, extent and geographical area factor that is used to determine the reputation of a mark. The judgment was passed in favor of the plaintiff and the Court observed that the plaintiff had achieved high sales and had heavily advertised thus, eliminating the need for a long duration of the sale.
In the case of Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, 2014 (57) PTC, the Delhi High Court recognized "MICROSOFT" as a well-known trademark as it was known to as well as used by most of the people around the world. The defendants were prevented from using the same mark "either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got unique goodwill and reputation."
Having briefly explained the prerequisites for a well-known trademark, it is pertinent to mention that the following, under Section 11(9) are not mandatory, which may pose hindrance while obtaining the tag of a well-known trademark :
Registration of the trademark,
Usage of the trademark in India,
Knowledge about the mark with the Indian public,
Registration or well-known aspect of the mark outside the jurisdiction of India,
A registration application has been filed in India.
A recent case in point that comprehensively highlights the importance of a well-known trademark is ISKCON V. Iskcon Apparel Pvt. Ltd. & Anr. COMMERCIAL IP SUIT (L) NO. 235 OF 2020. On June 28, 2020, the Bombay High Court declared the registered trademark 'ISKCON' as a 'well-known mark in India' which belongs to the religious organization known as International Society for Krishna Consciousness.
In this case, a commercial Intellectual Property suit was filed by ISKCON against an apparel manufacturing company called Iskcon Apparel, before the Bombay High Court alleging infringement of its trademark by the company to sell clothes online. The company in question had earlier submitted an undertaking agreeing to refrain from using the name ISCKON in future dealings and accordingly changed their name to Alcis Sports Pvt. Ltd. The main dispute in the present case was, despite such undertaking, the company is now known as Alcis Sports Pvt. Ltd. continued to conduct business online under their former name i.e. Iskcon Apparel Pvt. Ltd.
In pursuance of the above, the plaintiff's submitted before the Court the history of ISKCON to highlight its contribution to the trademark acquiring the tag of a well-known trademark with the following.
The Late Acharya Bhaktivedanta Swami Prabhupada founded Sri Chaitanya's The Hare Krishna Movement or the Krishna Consciousness Movement in New York in the United States of America, in and around 1966, in the style of International Society for Krishna Consciousness (ISKCON). Hereinafter the acronym was used regularly, continuously and in an uninterrupted extensive manner concerning the advertisement of its goods and services as the movement garnered support and immense popularity within a short time. The plaintiff's further argued that the trademark ISKCON enjoys a personality that goes beyond products or services provided by it and the recognition, reputation and goodwill acquired by the trademark is no longer restricted to any particular class of goods or services. Furthermore, they have been religiously safeguarding and protecting the rights granted to them by the trademark and have successfully initiated and won proceedings against the misuse of the same.
Having taken cognizance of the evidence submitted by both parties, the Court ruled favorably allowing the plaintiff's prayer to recognize their trademark "ISKCON" as a well-known trademark.
Justice BP Colabawalla observed that the term was coined, adopted and used by the Plaintiff for the very first time and is a trademark belonging to them as rightfully claimed. This deserves the highest amount of protection as it is associated exclusively with the plaintiff.
As such it was held:
The trademark ISKCON is widely acceptable,
It has gained popularity not just in India but in other countries as well,
The trademark was being used by the Plaintiff's openly, widely and continuously from the beginning itself,
In the past various actions had been taken by the Plaintiffs against potential infringers, to protect it.
The Court agreed with the arguments of the plaintiff's and held that the trademark "ISKCON" satisfies the conditions and tests laid down under Sections 11(6) and 11(7) of the Act. In furtherance of this, it was held that the famous trademark "ISKCON", is a well-known trademark as defined under Section 2(1)(zg) of the Act.
Protection of Well-Known Trademarks and Doctrine of Dilution
It becomes important to declare a mark as a well-known trademark because the reputation and knowledge of certain marks have crossed the threshold of the actual goods or services and have moved onto completely unrelated goods and services, within a nation or across international borders. Because of such expansion, there is always a looming threat of dilution of the well-known trademark. This happens when a well-known trademark or similar marks are used for inferior quality goods or services in non-competing markets, thus stripping away the uniqueness of the original mark. The objective of trademark law is not just the protection of well-known trademarks from infringement but also dilution.
For example, if the term COCA-COLA is used by a third party for soft drinks, it would amount to trademark infringement, but if the same is used for cars, it would amount to dilution.
The most famous case in terms of dilution of a trademark is the Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan, AIR 1994 Del 239, where the Court restrained the defendants from using the mark of BENZ, for selling undergarments to avoid confusion and deception when the mark is associated with one of the best cars in the world and has attained worldwide reputation. The Court observed that "Such a mark is not up for grabs—not available to any person to apply to anything or goods. That name is well known in India and worldwide, with respect to cars, as is its symbol a three-pointed star."
In the case of Tata Sons Ltd. v. Manoj Dodia & Ors. CS(OS) No. 264/2008, the Delhi High Court observed that "the Doctrine of Dilution which has recently gained momentous, particularly in respect of well-known trademarks emphasizes that use of a well-known mark even in respect of goods or services, which are not similar to those provided by the trademark owner, though it may not confuse the consumer as to the source of goods or services, may cause damage to the reputation which the well-known trademark enjoys by reducing or diluting the trademark's power to indicate the source of goods or services."
A well-known trademark plays a significant role in the global market and helps in appealing to the general public thereby increasing the reputation of the particular good or service. Such marks can distinguish themselves from ordinary trademarks because unlike trademarks that are known within the category of its goods and services, a well-known trademark attains goodwill and reputation from the substantial sector of the public beyond the class of goods and services. The need of the hour is the protection of strong and well-known trademarks not just from infringement but from losing their uniqueness and ability, in the eye of the public, to be associated singularly with a product, because as they say its all in the name.
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