What are “Well Known” Trademarks?

In simple language, well-known marks receive extra protection and are safeguarded against infringement of trademarks. Trademarks other than well-known trademarks provides for protection in a certain specific geographical area and to a certain extent in terms of products whereas well-known trademarks enjoy protection across the country and across different categories of goods and services. The registrar of the trademark prohibits any mark which is misleading or identical to any well-known mark. For example, ‘Amul’ is registered as a well-known trademark, which thereby means only the proprietor of Kaira District Cooperative Milk Producers can register the term ‘Amul’ for any of the class of goods and services. In the matter of Rolex v. Alex Jewellery Pvt. Ltd. & Ors., the defendants used the registered trade name of ‘Rolex’ of the plaintiff for the business of artificial jewellery which is why the plaintiff instituted a suit opposing the defendants in order to limit him from using their trade name further. It was stated by the court that the plaintiff is a watch manufacturer and has earned a trans-border reputation with the same trademark for which it can be recognized or allowed to be recognized as a well-known trading mark. Consumers of Rolex-made products, if finds jewellery in the same name might be presumed to be that of Rolex. The court awarded an injunction to the defendant.

Below mentioned are the sections associated with Well-known Trademarks in the Trademark Act

Clause 6 of Section 11 lists the factors to be considered while determining a Trademark as Well-known:

• Knowledge and awareness about the trade name or mark in significant sections of the public.
• Geographical location, duration and extent to which a trademark is used.
• Geographical location, duration and extent to which a trademark is being promoted in confirmation with goods and services applied for.
• Registration or request for registration of the trademark to the scope they reflect either the utilization or recognition of the mark.
• The record of compliance with the rights of that mark, specifically, the scope of the trademark’s recognition as well known by some court or any registrar under the record. 

Any 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 marks 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 and services.

Safeguarding the well-known trademarks across all the listed classes or sectoral categories is enshrined in clause 2 of section 11. In the matter of Daimler Benz versus Hybo Hindustan, the plaintiff was seeking an injunction in opposition to the defendants who used the plaintiff’s famous trademark the word ‘Benz with the logo.’  The court in consideration of the complainant’s mark to be well known and possesses a trans-border reputation, granted an injunction in opposition to the defendants who used the disputed marks for sale of their apparel. Also, Clause 9 of Section 11 provides for necessary conditions which need not be a prerequisite for the purpose of attaining the status of a well-known trademark. The conditions are listed below:

• The Trademark has been used in India;
• The trademark has been registered;
• The request of registration for a trademark is filed or applied for in India;
• The mark in question is well known or registered in any other sovereignty other than India;
• The mark in question is well-known to the larger section of people in India.

In accordance with Rule 124 of Trademark Rules as of 2017, the trademark proprietors may submit an appeal for a grant of status of a “well-known” trademark to the Registrar in the form TM-M. Yet another Clause 10 of Section 11 provides for an obligation on the registrar that in case of a dispute the registrar must safeguard the interest of the well-known marks against similar ones and also must consider and observe the malafide purposes of the opponent. In the matter of Whirlpool Co. & Anr. v. NR Dongre, the court granted the relief of an injunction. In this case, Whirlpool was not a registered trademark in India. However, the plaintiff possessed a reputation and goodwill internationally and used to trade their products in the US embassy located in India. While the defendant commenced using the disputed mark in question on their washing machines. Subsequently, the complainant instituted a matter against NR Dongre viz. the defendant and it was held that Whirlpool Co. had an acquired trans-border repute in India and consequently the defendants were prohibited from using it for their goods & services.

A general guide towards infringement of Well Known Trademarks:

• Prevention of registration of identical and misleading trademarks in respect of all classes of goods and services.
• Appeal for the abolishment of the infringing mark.
• Prevent incorporation of the trademark in the trade dress or trade name of any institution, organisation or corporate name.

In the famous case of kamal trading Company versus. Gillette UK Limited, where the defendants used the mark 7’O Clock for their product, that is toothbrushes. It was stated by the court that the complainant had earned a worldwide reputation as well as in India by continuously using the mark 7’O Clock extensively, as it was a well-known mark. If the defendant uses a similar mark, it will lead to confusion and deception to the market and users. Hence, the defendant was prevented from using the mark.