WELL KNOWN TRADEMARKS AND THEIR STATUTORY

PROVISIONS

Meta Title: What are Well Known Trademarks

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In this article the author expounds on the history and development of the term “well-known
trademarks” in the Indian Trademark laws and how the term has evolved into a very
important provision in the IP industry. The author further expounds on the statutory
provisions and some of the most important judicial decisions surrounding the well-known
trademarks and how they have helped change the dimension of the IP industry.

INTRODUCTION

The first time ever the term “well-known trademark” was coined at the Paris Convention 1.
After that, this was coined in the discussion in Trade-Related Aspects of Intellectual Property
Rights (TRIPS)2 in 1995 wherein the standards for the protection of well-known trademarks
were provided in Article 16(2) of the TRIPS Agreement. Today, most countries provide their
own set of coded regulations in their legislation for protecting and enforcing well-known
trademarks.

DEFINITION AND EVOLUTION OF WELL-KNOWN TRADEMARKS IN INDIA

Section-2(ii)(zg) of the Trade Marks Act, 19993 defines a well-known trademark as: “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”.

Before the definition was added by the legislature, any recognition of a well-known
trademark was done via the judicial pronouncements of the courts or the tribunals. However,

1
Paris Convention for the Protection of Industrial Property, 1883.
2
Trade-Related Aspects of Intellectual Property Rights, 1995.
3
Section 2(ii)(zg), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
 the decisions were far and few in-between and often conflicting which often led to contesting
adversarial positions for the proprietor.

PROVISIONS RELATED TO WELL-KNOWN TRADEMARKS

 The Trade Marks Act, 1999

 Protection of well-known trademarks [Section 11 (2)]4: This clause provides for well-
known trademarks to be registered and provided protection through all the classes and
a mark will not be registered if the mark is filed in a well-known mark in India and
the use of the later mark would infringe or be detrimental to the distinctive character
to the well-known mark.5
 Determining factors for a well-known trademark [Section 11(6)]6: Various factor-like
knowledge about the mark to the relevant section of the public, duration, geographic
location in which the trademark applies, or the extent to reflect the use or recognition
of the trademark or any record stating that the trademark has been recognised as well-
known by any court or by the Registrar.
 Conditions not required for well-known trademark registration [Section 11(9)] 7: This
clause discusses certain conditions that are not required for the grant of a well-known
trademark like. Conditions such as: a) if a TM is being used/registered in India, b) the
application for registration of TM has been filed in India, c) if there is already a well-
known trademark registered or known to the public at large in India or is well-known
in any other jurisdiction outside India.
 Registrar’s obligation to decide [Section 11(10)]8: In case of any
dispute/infringement, the onus is on the registrar to protect the interest of the well-
known trademark against the identical/infringing mark and take notice of the mala
fide interest/ motive of the complainant or the opponent.

 The Trade Marks Rules, 2017

 Filing and procedure for application (Rule 124)9: Before the amendment, a trademark
could only be declared as a “well-known trademark” after any judicial pronouncement
by any Hon’ble courts. However, now under Rule 124, the TM owner is permitted to
4
Section 11(2), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
5
Section 11(2)(b), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
6
Section 11(6), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
7
Section 11(9), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
8
Section 11(10), The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
9
Rule 124, The Trade Marks Rules, 2017 (India).
 file a request for grant of a well-known trademark to the Registrar. This rule also
provides for the proceedings and rectifications thereof.

FILING OF A WELL-KNOWN TRADEMARK

Since the Trade Mark Rules, 2017, the owner of a TM can directly file online for an
application of grant for a well-known trademark to the Registrar along with a statement of the
case, relevant documents like a copy of any judgement wherein any court has recognised the
TM as well-known, evidence showing the claimant’s right and the justification of the same
and an application fee of Rs. 1,00,000/-.

REMEDIES AVAILABLE TO THE TRADE MARK OWNER IN CASE OF ANY

INFRINGEMENT OF HIS WELL-KNOWN TRADEMARK

Section 27 of the Trade Marks Act, 199910 put restrictions on the use of similar/identical
well-known trademarks be it similar classes or different ones. Section 29 11 and 3012 of the
Act deal with the provisions of remedies in case of any infringements. These provisions are in
accordance with India’s obligation to the TRIPS agreement.

In case of punitive damages, the Indian judiciary has provided that in some cases punitive
damages shall prevent infringement and dilution of well-known trademarks. In Time
Incorporated v. Lokesh Srivastava13, the court decided that in TM infringement cases,
punitive and compensatory damages are required and hence grated Rs. 5 lacs as punitive
damages and Rs. 5 lacs as compensatory damages to the plaintiff.

JUDGEMENTS DEALING WITH THE CONCEPT OF WELL-KNOWN

TRADEMARKS

1. Daimler Benz v. Hybo Hindustan14: In this case, the court recognised the plaintiff’s
logo “Benz” as a well-known trademark on the ground of trans-border reputation and
goodwill, granted an injunction against the impugned mark of the defendant.

2. Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors. 15: In this case the court held that even
though the goods of the plaintiff deal in watches, due to the goodwill and reputation

10
Section 27, The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
11
Section 29, The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
12
Section 30, The Trade Marks Act, No. 47, Acts of Parliament, 1999 (India).
13
Time Incorporated v. Lokesh Srivastava [2005 (30) PTC 3 (Del.)].
14
Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369].
15
Rolex Sa v. Alex Jewellery Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.)].
 of the plaintiff for the mark “Rolex”, it might lead to misbelief in the public leading to
the defendant’s goods being mistaken for the plaintiffs’ ones. Therefore, the court
granted an injunction in favour of the plaintiffs.

3. Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu 16: In this case, the court
granted an injunction against the defendant for using the trademark “Microsoft” as it
was highly popular and had a multi-national reputation and goodwill and hence won’t
be open to anyone to get it registered.

4. Tata Sons Ltd. v. Manoj Dodia 17: In this case, the defendant was restrained from
using its mark “A1 TATA” as it was found to be infringing the well-known trademark
of the plaintiff which was “TATA”. It was held that since the plaintiff’s brand had a
trans-border reputation and goodwill, the defendant was trying to sail too close to the
plaintiff’s goodwill and hence the court granted an injunction as well as punitive
damages in favour of the plaintiff.

5. Whirlpool Co & Anr v. N R Dongre 18: In this case, the court decided that even
though the plaintiff did not have any registered mark in India, due to advertisements it
had trans national reputation, and therefore the use of the impugned mark by the
defendant on washing machines would amount to infringement.

CONCLUSION

With the advent of technology and globally synchronisation of all the technologies in goods
and services, it becomes quite essential to protect the well-known trademarks of the brands
that have acquired significant reputation and goodwill. World Intellectual Property
Organisation (WIPO) has been quite extensive in its approach to protect the trademarks,
especially the well-known trademarks across trans-border areas. The Trade Marks Act, 1999
and the Trade Marks Rules, 2017 ensure the protection of well-known trademarks by
developing principles that have evolved from the TRIPS Agreement, Berne Convention 19 and
the Paris Convention and in case of any dispute over any infringement or passing-off arises,
the courts have been awarded the appropriate jurisdiction to provide adequate protection to
the well-known trademarks.

16
Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, CS(OS) 2163/2010 & I.A. No.14225/2010.
17
Tata Sons Ltd. v. Manoj Dodia, CS(OS) No. 264/2008.
18
Whirlpool Co & Anr v. N R Dongre 56 (1994) DLT 304.
19
Berne Convention for the Protection of Literary and Artistic Works, 1886.
Hashtags: Trademarks, Well-known trademarks, TRIPS agreement

Authored By:
Asutosh Kumar Singh
University Institute of Legal Studies, Panjab University
4th Year