The concept of well-known trademarks is a cornerstone of trademark protection, ensuring that brands with substantial recognition are safeguarded from misuse and infringement. In India, the law governing well-known trademarks has evolved significantly, aligning with international standards while addressing the unique challenges of the Indian market.
This paper provides an in-depth exploration of the legal framework, starting with the definition and criteria for determining a well-known trademark under the Trade Marks Act, 1999. The study examines the role of the judiciary and the Trade Marks Registry in recognizing and protecting such trademarks, emphasizing landmark cases that have shaped this domain. It highlights the significance of cross-border reputation and the impact of global trade on the protection of well-known trademarks in India. The paper further delves into the measures available to trademark owners in order to prevent and address violations, including opposition proceedings, infringement lawsuits, and remedies provided under Indian law. It examines the challenges of safeguarding well-known trademarks in the digital era, particularly on online platforms and social media. By exploring recent legal developments and key judicial decisions, the paper emphasizes the importance of a strong strategy to maintain the uniqueness and reputation of well-known trademarks. It offers practical advice for businesses looking to establish and protect their trademarks in India, ensuring adherence to legal requirements while minimizing potential risks.
Introduction
Recently, InterGlobe Aviation Ltd., operating IndiGo Airlines, filed a trademark infringement suit against Mahindra Electric Automobile Ltd. in the Delhi High Court1, alleging unauthorized use of its well-known trademark "6E" by Mahindra for its upcoming electric vehicle variant "BE 6e." IndiGo argued that "6E," registered since 2015 across various classes, is integral to its brand identity. Acknowledging the strength of IndiGo's claim, the court recorded Mahindra's undertaking to discontinue the use of "BE 6e" and rebrand it as "BE 6" during the litigation. Mahindra, however, maintains that the marks differ significantly, as IndiGo's trademark pertains to airline services while Mahindra's is intended for automobiles, and the company plans to contest IndiGo's claims. This case underscores the privileges well-known trademarks enjoy under Indian law, particularly their protection across all classes of goods and services. Such privileges stem from their extensive recognition, reputation, and goodwill, ensuring that consumers are not misled and that the brand's distinctiveness is preserved.
Brands are an important consideration for people in today's generation, brands have a value for customers because we prefer different brands based on our personal preferences and choices. A trademark2 is used as an indicator by business organisations and companies that help consumers identify and differentiate between goods and services they prefer to use. A trademark can be granted to either a shape, number, word, logo, symbol, image or a combination of these. The main aim of trademark is the protection of goods and services with that of deceptively similar and identical products available in the market to avoid confusion for the consumers while identifying and choosing their goods and services.
While the IPR and their enforcement laws are the same for all trademarks equally, it's only partly correct because we have this concept of 'well-known' marks in India that enjoys a little extra privilege over mere registered trademarks whenever it comes to the enforcement of the IPR rights.
Section 2(zg) of the Trademarks Act, 1999 defines a "well known mark"3 as a mark that has gained enough reputation and good will in the market for representing the goods and services of a brand or a company among the public at large and is widely recognised by the general public and depicts a popular brand or company's identity. These trademarks enjoy a special privilege and extra protection under the statute unlike regular registered trademarks. While a regular registered Trademark only enjoys protection regarding particular goods and services within a particular location but a Well-Known Trademark enjoys protection across all classes of goods and services both at domestic as well as international levels.
Section 11(2)4 of the act grants protection to well known TMs across all classes of goods or services and states that a trademark having identical or deceptive similarity with an existing trademark wont be granted registration if the existing TM is a well-known trademark in India while section 11(6)5 specifies the factors to be considered while determining a well-known TM which includes knowledge and recognition of the trademark among general public, duration, extent and geographical area where TM is used, promotion and publication of TM, registration or application for registration of TM, record mentioning the rights enforcement where TM has been declared to be a well-known Trademark.
Remedies adopted by Indian Courts against infringement of well-known trademark
Before the 1999 Act, well-known trademarks were primarily protected under the common law doctrine of passing off. However, with the introduction of the 1999 Act, statutory protection was granted to well-known well s. These trademarks were safeguarded primarily on the basis of worldwide market reputation and goodwill undersigned.
It was in the landmark case of "Daimler Benz v. Hybo Hindustan6" that the court recognized the plaintiff's "Benz" logo as a well-known trademark, emphasizing its reputation beyond borders. The court, thus, issued an injunction to prevent the defendant from profiting from the trademark. Similarly, in "Red Bull AG v. Bakewell Biscuits Pvt. Ltd.7", the plaintiff, a globally well-known company, alleged that the defendant had infringed a similar mark to the famous "Red Bull" mark by introducing the "Red Horse" mark. The Supreme Court issued an ex-parte order interim inhibiting the defendant from using the mark in issue.
Another good example, "Whirlpool Co. & Anr v. N.R. Dongre8", was when a US company renowned across the entire globe, including India, for selling washing machines with the brand name "Whirlpool" brought defendants to court for selling washing machines of inferior quality at lower prices using the same brand name. The court issued an injunction against the defendants using the brand name, thereby protecting the plaintiff's right.
The High Court of Delhi in the case of "Time Incorporated vs Lokesh Srivastava9", ruled that, in IP cases, both punitive damages and compensatory damages will be awarded to the original owners.
In the case of "Kirloskar Diesel Recon Pvt Ltd vs Kirloskar Proprietary Ltd10", the Bombay HC protected the trademark "Kirloskar" which is so well known in India that if any other company uses this trademark for certain other businesses, then it may be assumed by the market and the public that the plaintiff diversified its business, which can further affect the reputation of the plaintiff's company. Similar is the case of "Austine Nichols & Co. & Anr v. Arvind Behl & Anr11" wherein the High Court of Delhi restrained the Defendants from using the trademark "BLENDERS PRIDE" for "alcoholic beverages including whisky or any other allied goods thereof" and it was held that the Defendants, merely by virtue of their obtaining registration in India prior to the registration by the Plaintiff do not acquire first past the post" rights and such registration would not hold goods.
In "Aktibolaget Volvo v. Volvo Steels Limited12" it was held that the plaintiff had gained reputation in India regarding its mark Volvo. It was advertised in a number of foreign magazines which had circulation in India and the plaintiff had also registered the mark in India. The defendant had used the mark with fraudulent intentions to gain from the Plaintiff's reputation. The inclusion of the concept of well-known marks in the Trademarks Act, 1999 is in accordance with the trends of providing greater statutory protection to newer concepts such as well-known marks and is a step in the right direction.
The Indian judiciary has been instrumental in safeguarding well-known trademarks, recognizing their value not only within the domestic market but also in the global context. By emphasizing the reputation and goodwill associated with these marks, courts have ensured that they are protected from misuse, dilution, and unfair competition. This protection extends beyond specific goods or services to the broader market perception, preventing consumer confusion and ensuring that the distinctiveness of such trademarks remains intact. The judiciary has also reinforced the principle that registration alone does not legitimize wrongful use if it undermines the rights of a well-known mark. These efforts, combined with statutory provisions under the Trademarks Act, 1999, reflect a progressive approach toward ensuring the robust protection of intellectual property in India.
Conclusion and Future Prospects
The evolution of trademark law in India has aligned with global trends, particularly with the increasing recognition of trademarks, service marks, and domain names on a global scale. The inclusion of provisions under the TRIPS Agreement has mandated all member countries of the World Trade Organization (WTO) to ensure robust protection for well-known trademarks. This has significantly contributed to enabling famous brands to expand their reach internationally, leveraging the safeguards provided by international and domestic frameworks. However, this development is not without its challenges. Critics argue that developed nations often leverage the global trading system to prioritize their intellectual property standards, compelling developing countries to adopt regulations favoring industrialized nations, which may sometimes inhibit local innovation.
Despite these challenges, the TRIPS framework has undeniably enhanced global protections for well-known trademarks, ensuring greater business confidence and safeguarding consumers against counterfeit goods. However, there is an urgent need for greater awareness about the importance of such protections, particularly in emerging markets, to shield consumers from deceptive practices and counterfeit products that undermine both brand value and consumer trust.
To further strengthen the protection of well-known trademarks, India must focus on several future-oriented strategies. This includes adopting advanced technologies like AI for real-time trademark monitoring, fostering international cooperation for swift enforcement against cross-border violations, and conducting widespread awareness campaigns to educate businesses and consumers. Such measures will not only ensure the integrity of well-known trademarks but also bolster India's intellectual property landscape, positioning it as a key player in the global economy. By addressing these challenges proactively, India can strike a balance between the demands of global trade and the preservation of local innovation, creating a more equitable and effective trademark protection ecosystem.
References
- https://www.indiatoday.in/business/story/indigo-mahindra-6e-legal-battle-court-case-what-experts-say-about-trademark-lawsuit-2644806-2024-12-05
- https://www.business-standard.com/industry/news/court-accepts-mahindra-s-undertaking-to-drop-6e-amid-tussle-with-indigo-124120900609_1.html
- https://articles.manupatra.com/article-details/Issues-and-Challenges-of-Well-known-Trademarks-in-21st-century
- https://www.ijlmh.com/wp-content/uploads/2019/03/Passing-off-and-Infringement-of-Well-Known-Trade-Mark%E2%80%99s-in-India.pdf
- V K AHUJA, Intellectual Property Rights In India, Vol. I, 2nd Edition.
Footnotes
1 Interglobe Aviation Limited (Indigo) Vs. Mahindra Electric Automobile Limited & Anr. Cs(Comm) 1073 / 2024
2 Trademarks Act,1999, § 2(zb)
"trade mark means a 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 shape of goods, their packaging and combination of colours"
3 Trademarks Act, 1999, § 2(zg)
"well-known trade mark, 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."
4 Trademarks Act, 1999, § 11(2)
5 Trademarks Act, 1999, § 11(6)
6 AIR 1994 Del 239
7 Red Bull AG v. Bakewell Biscuits Private Limited, CS(COMM) 227/2021
8 (1996) PTC 415 (Del).
9 2005(30)PTC3(DEL)
10 AIR1996BOM149
11 2006 (32) PTC 133 (Del)
12 1998 PTC (18) 47
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