Introduction
A trademark is a distinctive word, phrase, symbol, or design that is used to identify and distinguish a particular product or service from those of others. Trademarks are used to protect the reputation and goodwill of a business, and to help consumers identify and differentiate products and services in the marketplace.
Trademarks can be registered with the government to provide additional legal protection. A registered trademark gives the owner the exclusive right to use the mark in connection with the goods or services for which it is registered. It also allows the owner to take legal action against anyone who uses the mark without permission, or who uses a mark that is confusingly similar to the registered mark.
Trademarks can be valuable assets for businesses, as they help to establish brand identity and build customer loyalty. It is important to choose a strong, distinctive trademark that is not already in use, and to properly use and protect the trademark to maintain its value.
A well-known trademark is a trademark that has acquired a high level of recognition and reputation among the relevant public. This recognition can be the result of extensive use and promotion of the trademark over a long period of time, and can be considered a valuable asset to the owner of the trademark.
In many countries, including India, the concept of a well-known trademark is recognized by trademark law and is entitled to a higher level of protection. This means that the owner of a well-known trademark may be able to prevent others from using similar or identical trademarks, even if the other marks are used in relation to different goods or services.
ITC Limited v/s Central Park Estates Private Limited & Anr. C.O. (COMM.IPD-TM) 763/2022 and I.A. 18332/2022, 18333/2022.
ITC Limited is the Plaintiff. The Defendants are Central Park Estates Pvt. Ltd. and St. Jerome Hospitality Management Services Pvt. Ltd., and the disputed mark is ‘BUKHARA,’ which is used in the context of restaurants and other hospitality services.
The ‘BUKHARA’ restaurant is also recognized for its décor, design, layout, restaurant arrangement, silverware used to serve meals, wooden menu cards, and the rustic aspect that it has retained throughout the years. The plaintiff is the registered proprietor of the mark BUKHARA in India since 1985 for both its device and word mark.
A permanent injunction is pleaded by the plaintiff against the Defendants in addition to damages and other reliefs. The plaintiff also claims that a number of images demonstrating resemblance between their and the Defendants’ restaurants and marks is seen. Plaintiff has also requested that its mark ‘BUKHARA’ be declared a well-known mark under Section 2(zg) of the Act.
The parties reached an amicable compromise while the case was being heard by the Court. The Defendants promised not to use the mark “Balkh Bukhara” or any other mark that was similar or deceptively similar to the Plaintiff’s mark “Bukhara” in connection with their restaurant, hotel, or other hospitality-related services. The defendants also consented to replace their menu cards, waiter uniform jackets, and copper glasses. They also agreed to remove the name and phrase “Bukahra” wherever else the mark appears by December 31, 2022.
The High Court of Delhi’s Justice Pratibha M. Singh certified ITC’s mark BUKHARA to be a well-known mark. According to the record, the mark BUKHARA originated in India and has great goodwill and reputation not only among Indians but also among foreigners who visit India and bring back the same reputation. The judgment stated:-
“In view of all these circumstances which are in contrast to the position in the US, and considering the Indian legal position as elaborated above and the enormous fame and goodwill evidenced from the documents placed on record which are not denied by the Defendants, the mark ‘BUKHARA’ of the Plaintiff is declared as a well-known mark under Section 2(zg) read with Section 11(2) of the Act” the court held.
The HC instructed the Registrar of Trademarks to add the trademark to the “List of Well-Known Trademarks” after ITC Ltd completed the necessary requirements.
Conclusion
The determination of whether a trademark is well-known is made on a case-by-case basis, taking into account various factors such as the extent of the trademark’s use and promotion, the duration and geographical extent of its use, and the size and nature of the relevant public.
A well-known trademark is entitled to a higher level of protection under Indian trademark law, as it is considered to be more valuable and distinctive than a lesser-known trademark. The owner of a well-known trademark may be able to prevent the use of similar or identical trademarks by others, even if the other marks are used in relation to different goods or services.
It is important to note that the determination of whether a trademark is well-known is subjective and can vary depending on the context. It is therefore important for the owner of a trademark to carefully monitor and protect its rights in order to maintain its well-known status.