PROTECTION OF WELL-KNOWN TRADEMARKS IN INDIA

The term Industrial Property includes patents, trademarks, industrial designs and geographic
indications of source. They are a heap of selective privileges conceded to the legitimate
proprietor. It is essential to know about these IP rights, how they can be safeguarded and, in
due course, how to benefit from them. The customary role of trademarks and trade symbols is to
show the commercial origin of goods and services it also guarantees consumers and other
stakeholders a certain level of quality. "Trademark" is the legitimate term and represents a
distinctive mark or symbol to which an owner can obtain an exclusive right whereas "well-known
mark" is a more extensive term also including associations produced by a trademark, such as
goodwill, image and prestige.

Well-known marks have the capability of drawing in consumers, employees, financiers etc and
could be used to establish long-lasting relationships on the market. The beginning of the
well-known mark paves the way from the Paris convention to the TRIPS agreement and finally
gets the WIPO recommendation.

The Paris Convention for the protection of the industrial property is the oldest and most
multilateral industrial property treaty. In 1883 the doctrine of the well-known mark was
established under Article 6 of the Paris convention providing for the regime for the protection of
well-known marks as it enacts that the countries of the Union can refuse or cancel the
registration and prohibit the use of a mark which causes confusion as being reproduction,
imitation or translation of well-known mark of a particular country. The Paris convention did not
specify measures relating to the protection of the well-known trademarks or their recognition
procedures, thereby providing an opportunity for the signatory countries to address these matters
according to their wish.

Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement) also, enforce the
protection of well-known marks under Article 6 of the Paris Convention. TRIPs agreement has
incorporated Articles 16.2 and 16.3 of the TRIPS agreement. TRIPs Agreement enhanced the
understanding of well-known marks by providing the factors to determine the mark as well
known which included knowledge of the trademark 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. Though there has been an important enhancement of the aspect of the well-known
trademark but both the conventions lacked in defining the term well-known mark and thus left
the definition to be provided by respective national laws of different countries.

The draft of the World Intellectual Property Organization Committee of Experts on Well-Known
Marks has considered Provisions on the Protection of Well-Known Marks in its first, second and
third sessions. The Recommendation of WIPO’s policy is to adapt to the pace of change in the
field of industrial property by considering new options for accelerating the development of
international harmonized common principles. Well-known marks focus on the protection of the
distinctive character of a mark in regard to dilution, free- riding and tarnishment. As well known
mark goes away from the traditional concept of deception, proof of confusion in case of
infringement and passing off action becomes secondary in nature.

In the case of JG v. Standford, it was for the first time recognized that the term ‘well known in
relation to trademark originates from the term ‘reputation’ and it was held that the law of passing
off prevents commercial dishonesty on the part of trades. Protection of Well known marks in
India is at a higher priority level than compared to ordinary trademarks. India is a member of the
World Trade Organization since 1995 and thus a signatory to the TRIPS Agreement, adopted the
new Trade Marks Act 1999 which came into force in 2003 further providing for provisions
relating to well-known marks and introducing many statutory changes like the protection of
well-known trademarks even without registration and use in India as well as providing a special
right to the proprietor of well-known trademarks to institute opposition proceeding at the stage of
registration on the ground of the mark being a well-known trademark.

In India, section 2(1)(zg) of the Trademark Act 1999 provides the definition of a well-known
mark. The definition of the well-known mark provided in the Act gives no parameter to
determine whether a mark is a well-known mark or not, rather it uses ambiguous language that is
left open for interpretation by the courts. In absence of such proper guidelines regarding
well-known marks for enforcement proceedings, the scope of protection afforded to well-known
marks is adversely affected.
The new rules regarding the registration of well-known marks have been introduced in Rule 124
of Trademark Rules 2017, which provides determination of well-known marks by the Registrar
until now the well-known mark can be recognised through a trademark infringement dispute in
court, but now the trademark owner can make an application to the registrar for the determining
the trademark as for well-known mark. Section 29 (4) does not make any reference to bad faith
adoption in deciding the rights of the parties. The introduction of the present rule is considered to
be a significant development in regard to the recognition of well-known trademarks and their
protection but the major challenge which remains open for consideration is the Constitutional
validity of Rule 124 of Trademark Rules, 2017.

Before the existence of the Trade Marks Act 1999, the statute, which governed trademarks in
India was Trademark and Merchandise Act 1958. Section 47 of the Trademark and Merchandise
Act provided for defensive registration of well-known marks as well as passing off actions
against unauthorized use of well-known trademarks.

Indian Courts have upheld right in well-known trademarks even without any defensive
registration through remedy against passing off. Section 2(1)(zg) of the TM Act states that a
well-known mark in relation to any goods and 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 a mark in relation to other goods or services would be likely to the taken as indicating a
connection in the course of trade or rendering of the services between those goods or services
and a person using the mark.

Section 11 of the TM Act provides certain particular that needs to be put into consideration
before taking cognizance of a trademark as a well-known trademark:
1. Knowledge of recognition of the alleged well-known mark in the relevant section of the public
that indicates knowledge obtained through the promotion of the 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 trademark including
advertising or publicity and presentation at fairs and exhibition of the goods or services in which
the trademark appears.

4. The duration and geographical area of any registration of or any publication for registration of
that trademark under this act to the extent, they reflect the use of the recognition of trade mark.

5. The record of successful enforcement of the rights in that trade mark, in particular the extent
to which trade mark has been recognized as a well-known trade mark by any court or registrar
under that record.

6. The number of actual and potential customers of goods and services.

7. The number of persons involved in the channels of distribution of the goods or services.

8. The business circle dealing with the goods or services, to which the trade mark, applies.

9. Where a trade mark has been determined to be well known in at least one relevant section of
the public in India by any court or registrar, the registrar shall consider that trade mark as a
well-known trade mark for registration under this Act.

Concurrent use by two or more individuals of the same trademark for the same products is total
as opposed to the entire character of trademark law, for a trademark is intended to signify that the
goods originate from one source and one and only source. However, Section 12 of the Trademark
Act 1999 holds provisions to manage exceptional cases emerging from honest concurrent
utilization of the same or similar mark by distinctive persons. In the case of honest concurrent
use or of other special circumstances which in the opinion of the Registrar, make it proper so to
do, he may permit the registration by more than one proprietor of the trademarks which are
identical or similar in respect of the same or similar goods or services, subject to such conditions
and limitations, if any, as the Registrar may think fit to impose. Section 12 allows the registration
by more than one proprietor of indistinguishable or similar trademarks in admiration of the same
or similar goods. It is an exception to the preclusion of registration of similar marks held in
Section 11, and it overrides the simplification of denial.

The section requires honest concurrent utilization which implies that the use asserted must be
honest and in addition concurrent. The expression concurrent utilization implies that the
petitioner's use must be concurrent with the adversaries' utilization of the enrolled mark.
Factors relating to the successful honest concurrent user defence are:
1. The extent of use in time & quantity & the area of trade.
2. The degree of confusion likely to ensue from the resemblance of the mark which is to a large
extent indicative of the measure of public inconvenience.
3. The honesty of concurrent use.
4. Whether any instances of confusion have in fact been proved
5. The relative inconvenience which would be caused if the mark were registered.

With the 1994 amendment in the trade mark act effect on an honest concurrent user, the defence
has been diluted to a larger extent since the act requires that the proprietor of a prior mark would
have to oppose an application for registration in an opposition proceeding.

Well-known marks have been given special protection under Indian law due to their current
brand value. One of the important characteristics of well-known marks to be highlighted is the
huge amount of publicity done, no matter how old the mark has been. Trade mark proprietors are
been using fancy names, numerals or anything attractive that can make the mark unique and
hence provide them with greater protection. Without proper legislative action in regard to the
inconsistencies the provisions dealing with prosecution and enforcement of well-known marks
are bound to fade and eventually will dilute the protection afforded to well-known marks under
the Trade Marks Act, 1999.