ABSTRACT
The concepts, criteria and impacts pertaining to the new procedures for recognizing for well-known trademarks under Trademark Rules, 2017 are thoroughly analyzed in this article. In identifying the well-known Trade marks the factors like Geographical area, attributed value etc. are considered. The basis for designating well-known marks is established by the Trademarks Act, 1999, and the Trade Mark Rules, 2017, specifically Sections 11(6) to 11(9) of Trademarks Act, 1999. The process has become simplified for the trademark owners with the introduction of Rule 124 of Trademark Rules, 2017 which permits direct application to the Registrar instead of waiting for the court’s judgements. This article highlights the importance of Rule 124 in determining the well-known Trademarks without depending exclusively on court rulings. Moreover, some questions are also raised about the scope of protection of well-known trademarks. Overall the Trademark Rules, 2017 is a brings the positive development in the Trademark registration system this article also point to some favourable improvement or changes to make the Trademark registration system stronger.
INTRODUCTION
A popular mark, symbol or logo that represents a company’s well and truly earned goodwill and reputation is known as well-known trademark. Some factors to be considered for trademarks to be well known trademarks are-
- The degree of acknowledgement it attains within the sector.
- The period over which acknowledgement lasts.
- Acknowledgement in terms of geographical area.
- Attributed value of that acknowledgement.
If we see the Trademarks Act, 1999 the statutory definition of well-known marks in given under Section 2(1)(zg) as “A “well-known trademark” concerning any goods or services means a mark that has become so to the substantial segment of the public which uses such goods or receives such services that the use of such a mark about 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 concerning the first-mentioned goods or services”.
Before the introduction of Trademark Rules, 2017 the owner of the famous mark could only establish the mark as well-known mark only through the court by its judicial pronouncements, for example ‘Nestle’ has been declared by Delhi HC in 2013[i] as Well-Known trademark but after the introduction of Trademark Rules, 2017 now the owners can directly apply online to the Registrar of the Trademarks, to include the mark as well-known Trademark, who will consider the application through the provisions of Section 11(6) to 11(9) of Trademark Act, 1999 to determine the factors or relevant conditions to consider the trademark as well-known mark.
Section 11(6) of the act specifically talks about the factors that has to taken into account by the Registrar in order to decide whether the trademark is a well-known trademark.
Section 11(9) of the act provides the conditions to be followed by the Registrar in considering a Trademark as a well-known Trademark like
- The Trademark has been used and registered in India.
- The application of the registration is also filed in India.
- In India, the general public is aware of that trademark.
The court in the case of Tata Sons Ltd vs. Manoj Dodia laid down the 10-factor test to determine whether a Trademark is to be consider well-known or not. They are-
- “The extent of knowledge of the mark vis-à-vis the relevant public segment
- Duration of use
- Extend of product and services to which the mark is being used
- Method, frequency and duration of advertising and promotion of the mark
- Geographical extent of trading area where the mark is being used
- Registration of the mark
- Volume of goods and services being sold under the mark
- Nature and extent of use of same or similar marks by other parties
- Extent to which rights claimed in the mark have been successfully enforced
- Actual number of consumers consuming goods or availing services under the brand.”[ii]
NEW PROCEDURE FOR WELL-KNOWN TRADEMARKS UNDER TRADEMARK RULES, 2017
So, the significant development regarding Well-Known marks is the introduction of new rule i.e. Rule 124 of Trade Marks Rule, 2017 where new guidelines regarding well known marks are provided. Through this rule the owners of the famous trademarks don’t have to wait for the court’s judicial pronouncements to register their mark as well-known trademark and the new Rule 124 mentions that any owner/person can directly apply through Form TM-M with official and prescribed fee of Rs.1 Lakh to designate their mark as well-known trademark by providing evidence and supporting documents to support their claim.
Before determining the mark as well-known mark the Registrar can also invite objections from the general public that can be filed in 30 days from the date of invitation of the objections and the registrar can also remove any mark from the list of well-known mark if it found that the mark was wrongly or mistakenly admitted in the list.
The new rule also caters to the trademarks which are already registered as a well-known trademark as the owners have to just attach the copy of the judgement along with the application where the court declared the mark as well-known mark.
Some cases regarding well-known trademarks are-
- In the case of Rolex Sa vs. Alex Jewellery Pvt. Ltd, the mark ‘Rolex’ is found to be used by defendants in relation to artificial jewellery. Plaintiff filed the case against the defendant to prevent the further use of that mark. The court held that the plaintiff’s company is a premium watch company which has an excellent record and well known amongst the consumers as well as watch dealers. When public sees the artificial jewellery with the same name ‘Rolex’ will assume that it the extension of the Rolex company itself so the court restrained defendants to further use that mark.
- In the case of Daimler Benz Aktiegesellschaft vs. Hybo Hindustan, the defendants has used the mark of Mercedez ‘Benz’ including ‘three-pointed human being in a ring’ by selling the undergarments. Delhi HC said that the plaintiff’s company is a premium company and acknowledges the well-known character of Mercedez Benz and held that the use of that trademark for such a different item would be ‘perverse’.
But The Trademarks Rule, 2017 raises an unclear question regarding “whether a registered well-known mark’s protection is restricted to the class of goods and services it is registered for.” The judiciary has occasionally dealt with similar issues in a variety of cases, such as Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, where the court noted that the absence of appropriate legal guidelines led to a situation where it was challenging for the business to register the mark “Microsoft” as a well-known mark, which prevents the business from benefiting from a well-known mark and consequently, their mark was subject to infringement.
CONCLUSION
Even though it is a new rule the Trademark Rules, 2017 is a fantastic move that will help in developing the Trademarks registration system but by proper preparation and making relevant changes the trademarks registration system can be made stronger.
Author : Arya Bhatt, A Student at Dharmashastra National Law University (DNLU), Jabalpur, MP, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD
[i] Nestle India limited vs. Mood hospitality private limited, 2010 (42) PTC 514 (Del.) (DB)
[ii] Tata Sons Ltd vs. Manoj Dodia 2011 SCC OnLine Del 1520
