Well known trademark and Indian law
Well known trademark are widely known marks which are known to public and they therefore enjoy a special protection under Indian trademark law.Archi Bhatia
Meaning of well-known trademark
Well-known trademarks play a more significant role as a marketing tool and as a symbol of regard with many companies. Moreover, from the point of view of the consumer, trademarks act as a measure by which one can identify which product or service they want to avail. A well-known trademark was legally defined for the first time in Paris Convention of Industrial property. Paris Convention had set out the principle that would grant special protection to well-known trademarks but no procedure has been laid down and therefore every country has room to decide and set the procedure for protecting a well-known trademark.
The importance of well-known trademarks has been accepted worldwide by lawmakers and is enacted in the Indian law; however, this special protection that has been provided to well-known trademarks is still comparatively unknown in trademark registration services, including infringers who rely on the fact that territorial nature of trademark can easily help them get away from the said infringement penalties. Example of famous well-known trademark commonly known among people is Starbucks whose logo has not yet been registered but still cannot be used by other proprietors.
Indian statutory provision
Well- known trademark originates from the term reputation which was first observed in the case of JG v. Stanford where it was stated that law passing off prevented dishonesty in the marketplace by traders. In India protection of a well-known trademark is considered more important than that of an ordinary trademark. Earlier protection to well-known trademark was provided through common law procedure where formulation like passing off opted but now Indian lawmakers have included provisions concerning safeguard of the well-known trademark.
The Indian trademark law provides protection of trademarks that are well known. Indian intellectual property offices identify well-known trademark in India on the basis of their national and international reputation. Section 2(1) (zg) states that well- known trademark is mark which has become well known to the section of the public which uses such goods and services and use of that mark in relation to goods and services of other business would be considered as infringement as customers using the product would think that the goods and services given are in relation to the well- known brand.
Protection of well-known trademark under Indian law is provided to even those trademarks, which have not yet been registered under the act. The recent amendment in the trademark rule has given power to the registrar to declare a trademark as a well-known trademark under rule 124.Trademark can be declared well known through an application filled in the court of law or with the registrar by form TM-M.
Requisite for establishing well-known trademark
1. The trademark should be well-known among the people using those services or goods or by the promotional activities are done by them
2. The duration for which that trademark is being used in the marketplace or in any particular geographical area
3. The number of actual consumers of goods and services
4. The business circles dealing with that goods and services to which the trademark applies.
Section 11(10) clearly states that the registrar is under an obligation of protecting the trademark while a new application for registering trademark has been filed with the court or with the registrar.
Advantages of attaining a status of the well-known trademark
Once a trademark is acknowledged as well- known trademark by a Registrar of Trademark; the Trade Mark Registry has limited under the law to not register any trademark that is similar or identical.
Once declared well-known it will be protected across all classes of goods and services. At the time of infringement proceeding, a well-known trademark can be emphasized against infringer even if who is infringing is dealing in entirely different products or services. For example, in recent case Delhi, the high court declared Louboutin as a well-known trademark in India similarly Google was declared a well-known trademark which means that no one can use the term Google commercially and if done so would lead to infringement proceedings against him.Therefore, the consequences of being declared a ‘well known’ trademark are remarkable and would open up colossal opportunities for the company and the entrepreneur.