In the arena of Trademark, gaining of the status of a well-known trade mark is perceived to be the same as that of attaining Nirvana because the preservation of well-known trade marks lifts the traditional goal of protection of the trade mark. Nirvana refers to the state of liberating oneself from lust, envy, ignorance and everything that holds back. It is assumed that the existence of Nirvana would free oneself from any kind of fear. The protection of well-known marks stems from its fundamental objectives of protection of marks and focusses on maintaining the distinctiveness of a mark by protecting it from free-riding and dullness. The proof of deception and misunderstanding which is one the most important requirement for trademark infringement cases and passing off action becomes a secondary concern.

Nowadays, well-known marks are regarded as one of a valuable asset of an IP-firm. They primarily act as the communication vehicle of firms' collected value. It should be considered that the value of well-known marks is a result of large investments requiring good legal security. Considering the importance of a well-known mark in the present era, it is important to have awareness of the history and evolution of the development of well-known marks. The Paris Convention and the TRIPS Agreement also laid the groundwork for well-known marks, which are eventually recommended by WIPO. The crucial steps that led to the creation of the well-known marks are outlined below:

  • Paris Convention

The doctrine of well-known marks was very first established under the Article 6bis of Paris Convention which was signed in Paris on 20 March 1883 and entered into force from the 7 July 1884. The Article 6bis provides for a framework for the protection of well-known marks by providing that countries of the Union may reject or cancel the registration and forbids the use of a mark which confuses, such as the duplication, imitation or translations of a country's well-known mark.

The Paris Convention did not specify steps relating to the protection of well-known trademarks or their identification processes, thus giving the signatory countries an ability to deal with those matters in compliance with their desires, resulting in non-recognition of the well-known mark unless the owner of such marks specifically demonstrated the need for such recognition to the member countries.

  • Trade Related aspects of Intellectual Property Rights (TRIPS Agreement)

Article 16.2 and Article 16.3 of the TRIPS Agreement allow for the extension of Article 6bis to services and applications related to goods and services which are not identical to those for which the mark is registered. The TRIPS Agreement improved the understanding of well-known marks by specifying the reasons for describing the mark as well-known, including the knowledge of trade mark in the relevant public sector and the knowledge gained by the member concerned as a consequence of the promotion of the mark.

The TRIPS Agreement enhanced the understanding of well-known marks by providing with the factors to determine the mark as well-known which included knowledge of trade mark in the relevant sector of the public as well as the knowledge in the member concerned which has been obtained as a result of promotion of the trademark.

  • World Intellectual Property Organization (WIPO)

The General Assembly of the World Intellectual Property Organization (WIPO) and the Assembly of the Paris Union adopted a Joint Resolution concerning the Provisions for the Protection of Well-Known Marks in September 1999 ('WIPO Resolution'). To decide whether a mark falls into the category of well-known marks, the WIPO Resolution lists various parameters. The categories including a degree of a reputation of the mark, duration and geographical nature of its usage, extent of advertisement associated with the trade mark, number of registered trademarks worldwide, and cases of successful compliance.

Lacunas of Indian statutes with respect to well-known marks

In India, the concept of well-known marks is defined under Section 2(1)(zg) of the Trademark Act, 1999 and Section 11(2), (6), (7) and (9) of the Act very precisely talks about the interpretation of well-known marks, forming relative grounds for refusal of registration of trade mark. Section 29 of the Act relates to misuse of a registered trademark, does not mention the particular terms "well-known mark" in any of its clauses and has only used the expression "registered trademark that has a reputation" under clause 4. This makes it very confusing to understand the legislature's real intent for protecting the well-known mark after their registration. This undoubtedly indicates the legislature's intent to protect the well-known mark at the registration stage only because of the discrepancies in terminologies used in Section 11(2) and 29(4) of the Act.

Apart from the void of Section 29(4), other lacunas that need to be considered and clarified by the legislature are followed:

  • The description of a well-known mark given in the Act does not include a parameter to decide whether or not a mark is a well-known mark rather uses vague terminology by reading as "a mark that has become so open to the substantial segment of the public that uses or receives such services" is left open for the court to understand.
  • In the absence of a clear definition of a well-known trade mark, the compliance portion of such well-known trade mark still lacks clarification as to whether the mark is a well-known trade mark or not. Therefore the scope of protection provided to well-known marks is adversely affected in the absence of certain proper provision with respect to well-known marks for infringement proceedings.
  • Section 29(4) makes no reference to the adoption in bad faith while determining the parties' interests.

In Indian, new rules were enacted for registration of well-known trade marks under Rule 124 of the Trademark Rules 124 which provides registrar's recognition of a well-known mark. The well-known mark can be identified in court through trademark infringement suit but now the trademark owners can appeal to the registrar for identification of the mark as a well-known mark. The implementation of the new rule is considered to a major advancement in the identification and protection of the well-known trade marks but the constitutional validity of Rule 124 is still in question and remains the major obstacle. The Rules are delegated legislation and hence draws their legitimacy from the parent statute and in this case the Trade Mark Rules, 2017 draws its validity from the Trade Marks Act, 1999 in this case. However, this law would not take away the authority of the central government to enact a new provision for the identification of well-known trade marks. Section 157 of the Act which deals with the rulemaking power of the central government under the Trade Marks Act, 1999 is completely silent on the issue of well-known marks. Section 157 (xli) of the Act provides for residuary power of the Central Government to make rules for "any other matter, which is required to be or maybe prescribed". Like any other provision dealing with residuary powers, this provision as well bound by two most important principles of delegating legislative powers:

  1. The first principle is that the provisions of the delegated legislation i.e. rules in this case cannot be in dispute with the parent legislation.
  2. The Parliament cannot delegate the essential legislative function to the Executive.

The new rule i.e. Rule 124 conflicts with both the principles. The rule represents an entirely different policy for identifying the "well-known trade marks" through a non-adversarial procedure.

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.