The term "well-known trade mark" has been defined in the Trade Marks Act, 1999 and refers to 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.
A trade mark has considerable goodwill and reputation if it is limited to a specific geographical area whereas a well-known trade mark must have substantial reputation all over India. In other words it is the difference of degree and extent of territorial reputation. Any trade mark with the status of a "well-known" substantially improves the extent of protection available to it, as it provides the owner of the brand, the exclusive right to the trade mark against all unlawful users thereof, regardless of the differences in the field of business, goods or services. To make action successful, it is required to be established that the adoption of the brand by the unauthorized users is mala fide and without due cause. In short, the well-known marks are protected not only for goods and services related to those with which it is already associated, but for non-competing goods and services. A mark, if it has been decided as well-known in any legal proceedings including opposition, rectification or civil suit, is the influence which has to be taken into deliberation in favor of the said trade mark in all subsequent proceedings.
As per the Statute, the Registrar of Trade Marks shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:-
(i) that the trade mark has been used in India,
(ii) that the trade mark has been registered.
(iii) that the application for registration of the trade mark has been filed in India.
(iv) that the trade mark –
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or
(v) that the trade mark is well known to the public at large in India.
In view of the above, the trade mark owner is not required to carry on any business within India and neither is it required to possess any registrations, to be entitled to claim protection of its trade mark. However, with respect to foreign well known trade mark, there are various aspects that can establish that they are not entitled to protection in India if it is not well known here. The factors could be in the form if the foreign proprietor could not establish trans-border reputation and likelihood of confusion or deception among relevant sections of the public. In the cases where Indian Party has adopted the mark in good faith, the foreign trade mark owner would not be able to succeed.
In deciding the cases, the likelihood of confusion or deception has to be assessed only when the marks are used in the relation to the same or similar goods as seen in Section 11(1) of the Act. However, no such limitation is imposed under Section 11(2) (mentioned below):
11. Relative grounds for refusal of registration.-
(1) .....
(2) 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 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.
The provision under Indian law which offers a well known mark protection is Section 11(10) of the Trademark Act, 1999 mentioned below:
Section 11
(10) 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 ;
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.
Accordingly, not only well known marks are protected in India but the bad faith of the infringer is also taken into consideration. A significant element that also needs to be considered for a well-known mark to receive more protection than a lesser known mark is the degree of distinctiveness. If the mark is well known which is a coined or arbitrary mark or stylized device mark, then adoption of such a mark will be considered to be in bad faith. However if the mark is well known but generic in nature, then adoption of such a mark is seen to be in good faith with no intent to benefit from the registered mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
