India: Legal Recognition / Enforcement of Well Known Marks in India –A Service Marks Perspective

Last Updated: 13 July 2005
Article by Ashish Gosain

With the rise and growth of the services sector in India, Trade marks have evolved into uncharted realms of regulatory issues. Therefore, it is never understated that the understanding of Trademark and passing-off law is to be revisited in terms thereof. This coupled with Franchising emerging as a vehicle of foreign investment in areas like consumer goods in last few decades raised novel and intricate issues of protection of good will of marks possessing international or transborder reputation. The rise and spread of transnational corporations in liberalised economies like India have underscored the issue in concept and reality. To begin with, a look at the international developments help us put any legal framework in appropriate perspective.

Although there is no specific indication within the Agreement, it appears that trademarks having international repute in other jurisdictions be accorded with a national treatment no less favourable than those owned by it’s own nationals.

In order to further understand the concept and definition of well known marks, we refer to the definition under Article 6 bis of the Paris Convention as incorporated in various legal systems. Under Section 56 of the Trade Marks Act, 1994 of England states1 that:

  1. the applicant be a member of a Convention country; or
  2. is domiciled in , or has a real and effective industrial or commercial establishment in, a convention country,

whether or not that person carries on business, or has any goodwill, in the United Kingdom; and references to the proprietor of such trade mark are to be construed accordingly.

Earlier, the law as stated in the celebrated British decision in the Crazy Horse2 case was in effect requiring the existence of use or commercial activity in the particular jurisdictions3 where relief was sought, in light of the territorial nature of the rights provided by trademarks. However, certain jurisdictions had divergent views even then, as was the case of Hongkong4 where international reputation was recognised.

In this back drop of International developments we shall study the Indian legal position on this aspect.

Position Of Law In India With Respect To Well-Known Marks

To begin with there are two aspects to the scope of protection of Well-Known Marks in India, which are:

  • Determination of a mark as a well-known mark has to be done in accordance with certain criteria outlined below; [As per Trade Marks Act, 1999]
  • Establishment of "Bad faith" in the registration of a mark violative of rights in well-known mark.

In India, to begin with, under the Trade Marks Act,1999, use of the mark is neither a relative nor absolute grounds for refusal of registration of a mark.

Further, Section 2 (1) (zg) of Trade Marks Act, 1999 defines a well-known trade mark as " in relation to any goods or services, means 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."

The protection to well-known marks has been accorded by enshrining the concept as a relative ground of refusal of registration of a trademark. Section 11 (2) of the Trade Marks Act, 1999 states that:

(2) A trade mark which-

  1. is identical with or similar to an earlier trade mark; and
  2. 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 trademark 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 .

An interesting aspect outlined in sub-section (3) of Section 11 of the Trade Marks Act, 1999 is another relevant consideration that works to the assistance in protection of well-known trade marks.

(3) A trade mark shall not be registered if, or to the extent that, it’s use in India is liable to be prevented-

    1. by virtue of any law particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
    2. by virtue of law of copyright .

Sub section (4) of the said provision states that:

(4) Nothing in this section shall prevent the registration where the proprietor of the earlier mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.

Further the explanation states that:

Explanation- For the purposes of this section, earlier trade mark means –

  1. a registered trade mark or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question , taking account, where appropriate, of the priorities claimed in respect of the trade marks;
  2. a trade mark which, on the date of the application for registration of the trademark in question, or where appropriate, of the priority claimed in respect of the application , was entitled to protection as a well-known trade mark .

Subsection (5) requires that registration can be refused on these grounds if and only if objection is raised on the grounds stated above in opposition proceedings.

Determination Of Well-Known Marks- Some Factors Of Consideration

Now the determination as to what is a well-known mark has been based on the following factors mentioned in sub-section (6) of section 11, Trade Marks Act, 1999 which reads as follows :

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark , take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including-

    1. the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of that trade mark ;
    2. the duration, extent and geographical area of any use of that trade mark;
    3. the duration, extent and geographical area of any promotion of the trade mark , including advertising or publicity and presentation, at fairs or exhibition of goods or services to which the trade mark applies;
    4. the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of that trade mark;
    5. the record of successful enforcement of rights in that trade mark, in particular, the extent to which the trade a mark has been recognised as a well-known trade mark by any court or Registrar under that record.

Sub section relates to the determination of knowledge outlined in clause (i) of sub-section (6) of section 11 of Trade Marks Act, 1999. It shall take into account-

-The number of actual or potential consumers of the goods or services;

-The number of persons involved in the channels of distribution of the goods or services;

-The business circle dealing with those goods or services,

Subsection (9) does not require that for a trade mark to be a well-known one that-

- it has been used in India;

- That the trade mark has been registered;

- that the application for the registration has been filed in India;

(a) that the trade mark is well known in; or

(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

- that the trade mark is well known to the public at large in India.

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.
  • Thus, it is clear that once bad faith of the applicant in filing an application for registration can be shown, then, even a registered trade mark granted before the commencement of the Trade Marks Act, 1999 violative of rights in a well-known mark can be refused protection. [ sub-section (11) of section 11 of the Trade Marks Act,1999]

    Relevant Judicial Doctrines:

    In order to understand how a mark can be determined to be a well-known mark, let us look at the Doctrine of transborder reputation postulated by the courts in this regard. We shall state the legal position before the commencement and Trade Marks Act, 1999 in order to ascertain the factors considered to establish whether a trade mark is a well-known mark.

    In a decision of the Division Bench of the Bombay High court5, the division bench held that:

    " We must express our dissent with the view taken in this case. In our judgement it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. 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 periodical, magazines and in other medias . The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Take for example, the televisions, and Video Cassett recorders manufactured by National, Sony or other well Japanese concerns. These televisions and V.C.R’s are not imported in India and sold in open market becauseof trade restrictions, but is it possible even to suggest that the word "National" or "Sony" has not acquired reputation in this country? In our judgement, the good will or reputation of goods or marks does not depend on it’s availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturer. An identical view was taken by division bench of Mr Justice S.K Desai and Mr. Justice Bharucha in a judgement dated July 24,1988 in Appeal No. 368 of 1986.The question for consideration before the division bench was whether the goodwill in trade mark "7O’CLOCK"stood extinguished because of non-availability of blades with the mark in India after year 1958.the division bench turned down the claim by pointing out various reasons and we are in entire agreement with the observations made in the judgement made in the judgement on this aspect"

    The Whirlpool case6 considered the concept for the first time in detail. Here the plaintiff-corporation was carrying on business in several countries, had not renewed registration for trademark in respect of class covering washing machines due to foreign trade restriction in India prevalent after 1977 and thus the registration had lapsed. The plaintiff-Company proceeded to file a suit for passing-off against the defendants. An injunction was granted by the Delhi High court (reaffirmed by the Supreme Court7) The doctrine of " transborder reputation" was recognised outlined and reliance was placed on a host of cases8 (at paragraph 17) .These cases recognised that the reputation of a trader , trading or carrying on the business in another country, can travel to a country where he had carried no business. The trader’s trans-border reputation can be on the basis of the extensive advertisements and publicity. Such a trader could obtain injunction a court where he was not trading, to protect his reputation. In Apple Computer Inc case it was stated in reliance (at page 137) as was held that:

    "It is not necessary in the context of the present day circumstances the free exchange of information and advertising through newspapers, magazines, video television, movies, freedom of travel between various parts of the world, to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of it’s name or mark can be restrained by the court."

    A host of decisions have since interpreted" transborder reputaion" in a similar light9

    J. Bahri held after distinguishing the Sears case10 that: "Mere fact that the plaintiff has never manufactured any products in this country does not prevent it from acquiring the good will here in it’s trade mark. It is no doubt true that an action for passing off relates to business in this country. The foundation for the action for passing off is the protection of goodwill and so, one must prove the existence of goodwill in this country before obtaining a relief of passing off .The principle of law of passing off has been also made applicable to non trading business or non-profit mating bodies as well."

    Quoting the Wander Limited vs. Antox India11 decision, where it was held:

    "An infringement action is available when there is violation of specific property right acquired under and recognised by the statute. In a passing off action, however, the plaintiff’s right is independent of such a statutory right to a trade mark and is against the defendant which leads to or is intended to or calculated to lead to deception."

    In Calvin Klein Inc vs. International Apparel Syndicate12 accepted the view of a Canadian Court of Appeal in Orkin Exterminating Co Inc vs. Pestco Co of Canada Ltd13where it was held that:

    "Canadians travelling in the United States are exposed to Orkin’s extensive advertising and the use of of it’s trade marks in the country. There was evidence adduced that millions of Canadians travel in the United States every year, particularly in the southern vacation states, where Orkin’s operations are extensive. Canadians in Canada are exposed to Orkin’s advertising and articles appearing in American publications which circulate here......" .

    The principles established in regard to the doctrine were reiterated by the case of Aktiebolaget Volvo v. Volvo Steels Limited14, however, a Division Bench of the Bombay High Court took consideration of subsequent events in terms of the intention of the party to enter the Indian market as affecting the balance of convenience, a factor that governs the discretion in grant of injunctions. However with respect to transborder reputation, a division bench held that transborder reputation is recognised by Indian courts and that actual sale in India is not necessary for a plaintiff to establish it’s goodwill and reputation in India. The division bench relied on the Whirpoool case where it was observed that:

    "Thus a product and it’s trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or extra-territorial reputation not only through import of goods but also by it’s advertisement. The knowledge and awareness of the goods of a foreign trader and it’s trade mark can be available at a place where goods are not being marketed and consequently not being used."

    The court placed reliance on Paragarphs 156,Volume 48 of Halsbury’s Laws of England

    which reads as follows in this regard:

    "156. Whether actual trade need have commenced- A passing-off action can be sustained prior to the actual commencement of trading by the plaintiff. A plaintiff may acquire a substantial reputation prior to making sales of a product or service because of advance advertising and press publicity and, in such case, may sue others who seek to trade on the reputation and goodwill that is able to be protected even before it’s formal incorporation and within hours of the announcement of it’s intended formation. Where a plaintiff has incurred considerable expense making preparations for the launch of a product which will rapidly acquire a reputation once launched, a defendant who commences advertising before the plaintiff with the intention of defeating the plaintiff’s acquisition of an exclusive right to the mark concerned may be restrained by a quia timet injunction."

    Further reliance is placed on paragraph 180 of the same which reads:

    "Actions by foreign traders- A number of considerations arise when a plaintiff seeks to restrain the use in the United Kingdom of a name, mark or other indicia under which he has carried on business abroad. First , a plaintiff in any case off passing-off must prove a reputation extending to the geographical , area in which the defendant’s use of the name ,mark or other indicia complained of is taking place, whether this is another part of the country in which the plaintiff trades or in a different country, for if he has no reputation in the United Kingdom then the defendant’s use of a similar name or mark cannot involve any misrepresentation. If the plaintiff can establish that a substantial number of persons with whom the defendant intends to trade in the United Kingdom know of the plaintiff’s business, so that the element of misrepresentation is established, the plaintiff must further show, as in any passing-off action, that the misrepresentation, that the misrepresentation poses a real and tangible risk of injury to his business or goodwill.

    However it is unclear whether there is an additional requirement that the plaintiff must carry on business in , or at least have a trade extending to , the country in which he seeks to restrain the defendant from using the mark or name, or whether the geographical separation of the plaintiff’s business from the defendant’s is factual element which merely makes it difficult, but not impossible in all circumstances, for a plaintiff to show that the defendant’s activities are likely to cause him substantial damage. What is clear is that a plaintiff who has no place of business in the United Kingdom and does not directly trade there but whose goods are imported by others can acquire a reputation and goodwill that is able to be protected. A business carried on abroad but which corresponds with customers in the United Kingdom can likewise acquire a reputation and goodwill able to be protected.

    It is more doubtful whether passing off can be established where the plaintiff’s goods or services are not marketed in the United Kingdom but his customers who have come across his goods or services abroad reside in or come to the United Kingdom, although in one such case an interlocutory injunction was granted. However, it has been held that a plaintiff whose establishment in Paris had been adverted in England through travel agents and who had some customers in England who had visited Paris, could not maintain a passing off action in England against a defendant who has adopted the name of the plaintiff’s establishment and used similar advertising with the intent of exploiting the plaintiff’s reputation , because goodwill could not be acquired without actual user in England. This because be acquired without actual user in England. This decision has been criticised as wrongly decided and tenuous user in the United Kingdom has been treated as justification for protection of a reputation primarily acquired by trade abroad but the case has been cited with approval by the court of Appeal.

    The extent to which a reputation acquired by trading abroad may be protected in the United Kingdom may depend to some extent upon whether a trade is to be treated as a matter of law as having a separate goodwill in each country in which he trades or whether the confining of goodwill to a particular country or area is a question of fact tending on the trade patterns and circumstances involved. If goodwill is to be treated as a matter of law as stopping at frontiers there may still be cases where the defendant’s activities are likely to cause damage to the plaintiff’s business in the country or countries where he trades."

    Thus the doctrine of transborder reputation which lies at the root of well-known trade marks and their legal protection is firmly entrenched in trademark jurisprudence.15

    Doctrine Of Trade Connection In Relation To Goods / Services Falling Within The Same Or Different Classes

    Another legal doctrine that was postulated by Indian courts was in relation to the intention of the defendant in using the goodwill and reputation of the owner of a mark known to be well-known. This can be seen to be offshoot of the definition presently ascribed to a well-known mark under Indian law. This was the " Doctrine of Trade Connection" between the classes in which the mark sought to be protected was registered. It is relevant to state here that curiously, the said principles have been established in relation to trademarks covering goods only. Since service marks came into existence w-e-f from 15th September, 2003 only (when the Trade Marks Act, 1999 came into force), it appears to be a consideration to make the case for service marks difficult in as much as no suit for infringement could be instituted as service marks were not recognised earlier but passing-off actions could be maintained. In a passing off action, however it is required that an element of dishonest intention in user be established .Let us briefly look at the judicial interpretation available in support of the same.

    In Warnink vs. Townend & Sons (HULL) Ltd. 1979 A.C 73116, Lord Diplock identified the following five characteristics which must be represented in order to create a valid cause of action for passing-off:

    1. a misrepresentation ,
    2. made by a trader in the course of trade,
    3. to prospective customers of his or ultimate customers of goods or services supplied by him,
    4. which is calculated to injure the business or goodwill of another trader (in the sense that there is a reasonably foreseeable consequences),and
    5. which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in quia timet action) will probably do so .

    In Reckitt & Cdman Products vs. Borden Inc & Ors 1990 R.P.C 341, it was held that proof of fraudulent intention is not a necessary element in a cause of action for passing off .The relevance of fraud to this tort is simply that " if the intention to deceive is found, it will be readily inferred that deception will result."

    In Century Traders vs. Roshanlal Duggar & Co AIR 1978 Delhi 25017, a division bench held that:

    "In passing off cases, however the true basis of action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to goodwill of his business.... this right is to be protected and the balance of convenience is in favour of the person who has established a prima facie right to property."

    In N.R Dongre vs. Whirpool Corporation AIR 1995 Del 300, it was held that the concept and principle on which passing off action is grounded is that no man has any right to represent his goods as the goods of another. A trader needs protection of his right of priori user of a trade mark/trade name as the benefit of the name, fame, reputation and image and goodwill earned by him cannot be taken advantage by another trader by passing off his goods as those of the prior user of the trade mark or trade name .

    In Ellora Industries vs. Banarsi Dass AIR 1980 Delhi 254, it was held that "confusing customers as to source, is an invasion of another’s property right."18

    Similarly, in Honda Motors Co Ltd. versus Charanjit Singh & Ors 2003(26) PTC 1 (Del) a passing off action was maintained by a plaintiff who was registered in respect of automobiles and power equipments against a defendant using the goodwill in the trademark in respect of pressure cookers.

    Further in Daimler Benz Aktiengesellschaft & Anr v Hybo Hindustan AIR 1994 Del 239, the plaintiff was using the trade mark Mercedes Benz in relation to vehicles, whereas the defendant had started using the trade mark BENZ in respect of undergarments. The Court granted injunction restraining the defendant from using the trade mark "Benz" as well as "three pointed human being in a ring." The judgement was upheld by the Supreme Court. The following observations are worth noting:

    "There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. "Benz" as name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognise the name "Benz" used in connection with cars. Nobody can plead in India, where "Mercedes Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAS, where there are Mercedes Benz trucks have been on roads in every large number,(known as Mercedes Benz Trucks; so long as the collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference to cars or trucks.

    Thereafter, the court also relied upon cases19 where the class of goods in which the mark was used by the defendant was entirely different from that of the plaintiff’s. Even in such cases injunction against passing off have been granted.

    Doctrine Of Bad Faith:

    Section 11 (10) (ii) of Our Act, 1999 requires us to prove the presence of bad faith in order to displace the immunity placed on marks already registered . It is pertinent to note that in respect of service marks no registration was possible until the Trade Marks Act, 1999 notified on September 15, 2003 .The element of bad faith is to be established in order to destroy the immunity to trademarksregistered before the commencement of this Act (which however, does not apply to service marks). Under the Trade Marks Act,1958

    there was no such consideration in respect of other trade marks . Also this applies in respect of the Registrar’s determination that the reputation in a well-known mark has been dishonestly used. However, once it can be shown that material circumstances have not been revealed by the applicant to the Registrar, the registration in respect of that mark (service mark) can be invalidated. For this, we shall briefly look at the development of case law on the doctrine of bad faith.

    Preliminarily, the doctrine could be seen as developing from the concept of trademark dilution. In Caterpillar Inc versus Mehtab Ahmed & Ors 2002 (25) PTC 438 (Del ), the court held that :

    "There is no doubt that mark of the plaintiff has become synonym for quality of high degree and adoption of it’s name alongwith distinctive and unique characteristics of style by defendants projects propensity to trade or cash upon goodwill and reputation of the plaintiff’s trademark. It is nothing but piracy of trade name. Plaintiff has a right to protect it’s mark reputation, goodwill and risk of dilution involved in the act of passing off from the unscrupulous designs of the defendants"

    Similarly, in Jolen Inc. versus Doctor & Company 2002 (25) PTC 29 it was held that:

    "It is not necessary that the association of the plaintiff’s mark with his goods should be known in the countries where it is known best. Mere advertisement in other countries is sufficient if the trademark has established its reputation and goodwill in the country of its origin and countries where it is registered.

    In modern world, advertisements in the newspapers where party is engaged in business through overseas editions or otherwise. Even if it is assumed that such advertisements or mark do not travel beyond the borders of the countries where the plaintiff has the business still it has a right to protect its reputation and goodwill. It is more so where the trade name has been pirated in totality and not by way of having deceptive or confusing similarity. We are living in a world where there is enormous mobility. Well travelled Indians and tourists cannot remain unaware of international commodities. Reputation always travels faster than men Whenever persons travelling abroad for business or pleasure or any other purpose viz study or temporary postings come across an article of a tradename of international reputation they are bound to be confused as to the source and quality if they happen to see that commodity in their country where there is no physical market. Mere likelihood of confusion is sufficient."

    A similar judgement in an Indonesian case20 has been enforced recently by Delhi High Court in which a mark even though registered in a jurisdiction other where registration was sought to be cancelled on the grounds that it was registered in English language and not in Indonesian language was used to show "bad faith".

    In the U.K case decision in Daawat Trade Mark [2002] RPC 297 (TMR) in an application for declaration of invalidity it was held that the registration was made with the intention of pre-empting prior foreign user in respect of rice and similar goods covering the registration. The registered proprietor had no intention to use the mark himself. Partial revocation was ordered. It was held that:

    1. To make out a prima facie case of bad faith, the applicant had to show that the registered proprietor had had knowledge of the applicant’s use of the mark DAAWAT in India prior to the date of application for registration of the same mark in the U.K had reasonable grounds to believe that the applicant intended to enter the U.K market for rice under that Daawat mark, applied to register the mark in order to take unfair advantage of the applicant’s plans.
    2. The evidence showed that the application for registration of the mark Daawat in the U.K in respect of rice and similar goods was in effect, a tool by the registered proprietor in order to improve its prospects of obtaining an agency or distribution agreement with the applicant in connection with the latter’s plans to selling it s rice in the United Kingdom.
    3. While the registered proprietor believed that the conduct it was engaged in constituted acceptable commercial behaviour and was unfair to the point of bad faith.
    4. The question of bad faith had to be judged at the date of the application for registration. To the extent that the application was made in bad faith, the defect could not be cured by establishing at a later date, the same applicant could have made the application in good faith.

    A similar provision existing in U.K in the form of Section 3(6), Trade Marks Act, 1994 reads to the same effect. In fact, subsection (1) of section 11 is similar to section 72 of the Trade marks Act, 1994. The principle laid down in this case is important in this respect as it can be used to establish bad faith in terms of non-disclosure of client’s trade mark (service mark) during the progress of its own application for registration in India.

    Lastly, in Gromax Plasticulture v Dow &Low Non-Wovens Ltd, Lindsay J. Considered the meaning of bad faith in S 3(6) of the U.K Trade mark law and stated that:

    "I shall not attempt to define bad faith in this context . Plainly it includes dishonesty, and as I would hold, includes also some dealings which falls short of the standards of acceptable commercial behaviour as observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what it is or is not bad faith as a matter best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to words of the Act and upon a regard to all material surrounding circumstances. "

    It is also relevant to note that since this is determined both vis-a-vis the applicant and the owner of the well-known mark , it is essential to establish that the plaintiff (owner of trade mark ) had no previous knowledge of the same .

    Doctrine Of Delay And Laches And Acquiescence:

    Curiously, the said principles have been established in relation to trademarks covering goods only. Since service marks came into existence w-e-f from 15th September, 2003 only (when the Trade Marks Act, 1999 came into force), it is a consideration that passing-off actions could be instituted that laches and delay in respect of instituting passing off actions become material. The doctrine of delays and laches applies in order to see the conduct of the plaintiff as was held in the case of Cluett Peabody &Co Inc v Arrow Apparels 1998 PTC (18) 156 This case was however distinguished on facts in Pizza Hut LLC and Pizza Hut Inc versus Pizza Hut India Private Limited as reported in paragraphs 23 and 24 in the same.

    In view of the above, foreign right holders can marginally enforce its service mark as a well-known mark in light of considerations, provisions and judicial precedents outlined above in respect of passing-off actions. However, the element of knowledge as an exception to the doctrine of laches can serve to provide some respite in terms of enforcement. All in all, it is crucial for such foreign rights holders to act for proactively enforcing the goodwill established internationally by registration of trademarks and institution of timely and appropriate proceedings for enforcement.

    Footnotes

    1. Halsbury’s Laws of England Volume 48 page 86 at para 142 in relation to protection of well-known trademarks comparing Section 56 of the Trade Marks Act,1994 (U.K)

    2. Alain Bernardin & Cie versus Pavilion Properties Limited [1967] R.P.C 581.See also New Star Industrial Co Ltd versus Yap Kwee Kor [1976] FSR 256

    3. Reiterated in Anheuser-Busch v. Budejovicky Budvar [1984] F.S.R 413

    4. Tan-ichi v Jancar [1990] F.S.R151 , S.C (H.K)

    5. Kamal trading co and Ors v Gillette U.K Ltd.1988(12)IPLR 135 at page 143

    6. 1996 PTC 476

    7. Reaffirmed in 1996 (16) PTC 583

    8. William Grant & Sons Vs Mc Dowell & Co Ltd. 1994 (30) DRJ 105; Apple Computer Inc vs. Apple Leasing & Industries 1992 (1) Arb L.R 93 ; Panhard Leavassor’s case (1901) 18 RPC 405 ,Poiret u. Jules Poiret Ltd. (1920) 37 RPC 177, Sileraton Corporation 1964 RPC 202and Globe Elegance 1974 RPC 603.

    9. WWF International vs. Mahavir Spinning Mills 1995 DRJ 412 following the decision in Sears Roebuck & Co vs. Happy House (TV) Mfg Co Ltd. & Ors1992 PTC 59

    10. ibid at foot note 9.

    11. 1990 (2) Arb .L.R 399 at para 10

    12. 1996 PTC 16 Calcutta High court decision

    13. 5 CPR (30) 433. The same view was based on the decision in Sheraton Corporation vs Sheraton Motels 1964 R.P.C 202

    14. 1998 PTC 18

    15. See also Alfred Dunhill vs. Kartar Singh Makkar and Ors 1999 PTC (19) 294 [Delhi High Court] ; Honda Motors Co Ltd versus Charanjit Singh &Ors 2003 (26)PTC 1(Del) and Pizza Hut International LLC and Pizza hut Inc. versus Pizza Hut India Pvt. Ltd. Suit no.1780 of 1999 (Attached herewith)

    16. Relied in Alfred Dunhill case 1999 PTC (19) 294 (Del)

    17. Mentioned at paragarphs 7 and 8 of Alfred Dunhill Judgement

    18. Similarly, held in Caterpillar Inc versus Mehtab Ahmed & Ors 2002(25)PTC 438(Del)

    19. Ciba-Geigy vs Surinder Singh 1996 PTC (16) 293

    20. Kangaro Industries (Regd) versus Harsono Hardjolukito and Anr. 2004 (29)PTC 175(Jakarta)

    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.

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    Registration (you must scroll down to set your data preferences)

    Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

    • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
    • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

    Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

    Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

    Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

    Please indicate your preference below:

    Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
    No, I do not want Mondaq to share my personal data with Contributors

    Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

    Yes, I am happy to received promotional communications from Mondaq
    No, please do not send me promotional communications from Mondaq
    Terms & Conditions

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

    Use of www.mondaq.com

    To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

    You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

    You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

    In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

    however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

    Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

    Mondaq’s Rights and Obligations

    Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

    Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

    Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

    Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

    Disclaimer

    The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

    General

    Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

    These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

    You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

    No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

    If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

    Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

    By clicking Register you state you have read and agree to our Terms and Conditions