Introduction

Well-known Trademark or mark have a special status under the law of IP (intellectual property) when a brand is well-known. In India, and many other countries, well-known trademarks are famously used and protected irrespective of its registration or scope of goods or services. This enables greater protection for the globally connected brands and aids in preventing mistakes, dilution and loss on account of coming from a wrong man. However, obtaining the status of “well-known” in India is not easy. There are many legal hurdles which a business would need to jump in order to be able to achieve that, by showing the reputation it gained, withstanding hefty legal costs, guiding through inconsistent court decisions and grappling with jurisdictional issues.

The article analyzes the key issues in law regarding the branding of products as well-known trademarks in India by going through some key cases, statutory provisions and what are the practical problems faced by entities getting the status of well-known trademark.

1. Evidentiary Burden: Proving Well-Known Status

The sheer quantum of evidence that would need to be proved by Indian owners of trademarks to show that their mark has acquired such reputation among the public at large is the major hurdle in respect of becoming well known under the new regime. Though well-known trademarks are covered by the Trademarks Act, 1999, the burden of establishing reputation and recognition within India rests with the owner.

Types of Evidence Required

It considers the following factors under Section 11(6) of the Trademarks Act while making determinations of whether a trademark is well known.

Degree of Knowledge and Association: showing the consumer’s level of knowledge and acquaintance regarding the mark, among the public-at-large or in specific groups of the public.

• The period for which trademark has been used, the scope or geographic area of such use.

Promotion and Advertising: Evidencing the extent and nature of the advertising and promotional activities including advertisements, sponsorships, and other media coverage.

Judicial or Administrative Recognition: Previous judicial or administrative recognition that the mark has been well known in India or elsewhere.

Challenges in Proving Reputation

Showcasing a trademark to be well-known is very challenging and expensive, especially when it traverses different regions of India. Most businesses also cannot measure the reputation of their brand, especially if the business operations are dispersed in various industries or sectors.

For example, in Tata Sons Ltd. v. Manoj Dodia & Ors, the Delhi High Court relied on the evidence provided by the company demonstrating strong recognition and a history in India that stretches over years to hold that the “TATA” mark has acquired “well-known” status. In many such cases, however, it would be very difficult to come by such evidence for brands in general, especially because there would not be such established recognition as with a legacy brand like TATA.

2. Costs of Legal Proceedings

Registering a well-known trademark in India itself becomes an evidentiary challenge as well as an expensive exercise. Here, the trademark owners must spend huge amounts of money collecting evidence, doing market research, and litigating in court to prove that their mark is well known.

Procedure for filing application

Well-known trademark can be declared in India as follows:

Court Proceedings: In a trademark lawsuit, it lies in the court’s discretion to declare a mark as well-known if it has sufficient evidence.

Registrar of Trademarks: A trademark owner can move to the Registrar to enter his mark as a well-known trademark under Rule 124 of the Trademarks Rules, 2017. For that, it requires an application and a fee of INR 1 lakh along with proof in support.

Both these processes involve significant legal expenditure and time. The court route requires litigations over a fairly long period, and the costs of battling infringement cases while struggling to acquire known status may be so heavy to afford by smaller business.

3. Inconsistent Judicial Interpretations

Judicial pronouncements are one of the legal barriers for achieving the status of well-known trademark in India due to lack of consistency in judicial interpretations. Indian courts have broad discretionary powers to determine whether a trademark qualifies under a well-known trademark as standard of proof differ from courts to courts.

Examples of Inconsistent Judgments

• In ITC Limited v. Philip Morris Products SA, the Delhi High Court held ITC’s “Classic” mark to be a well-known mark in the cigarette trade and considered several factors such as advertisements, consumer surveys, and publicity through media.

• In Toyota Jidosha Kabushiki Kaisha v. M/s Prius Auto Industries, here it was held by Delhi High Court that “Prius” trademark was not well-known in India, as there was no recognition of the mark by the consumer at the Indian base at that time. The Supreme Court reversed the said judgment, but the case well presents how judgments are different depending on the judicial considerations of public awareness or lack thereof.

This, of course, brings unpredictability to owners of the trademark. One court will recognize that a mark is famous or well recognized, while another may not consider it so.

4. Jurisdictional Complexities

This introduces greater complexity in the process of establishing the status of well-known trademarks in the context of India’s federal structure. There are different High Courts across India that present trademark cases, and each has its own jurisprudence and stance towards intellectual property law. Therefore, a trademark can be well known in one part of the country but not necessarily so in another.

[Image Sources: Shutterstock]

Cross-Jurisdictional Recognition

As Indian courts are now establishing a more uniform approach toward intellectual property rights, the problem created by inability to centrally standardize recognition of trademarks among all regions is the fact that a trademark owner may need to file separate lawsuits in many courts across the country to ensure that one’s mark is uniformly recognized and protected by law throughout the nation.

The position of the Registrar

In 2017, the Trademarks Rules incorporated Rule 124 that calls for the maintenance of a centralized list of well-known trademarks by the Registrar of Trademarks. Once declared as a well-known mark and placed on this list, it gets protection all over India, whether it is registered or not for a class of goods or services. Obtaining this centralized recognition, though, remains an arduous and expensive procedure.

5. Protection Against Dilution and Infringement

Once declared well-known, it benefits greater protection than any infringement and dilution. However, the enforcement of such rights is another bothering hassle for trademark owners. The Indian marketplace is undoubtedly very diverse, and well-known trademarks generally experience bigger challenges from unauthorized use or imitation, especially within the smaller markets and much less regulated industries.

Watering down and Blurring

Known marks are even more vulnerable to the impact of dilution, wherein a non-trademark holder business having a similar mark slowly erodes the differential for consumers between the original trademark and the offending mark. In India, courts have been generous about protecting known marks from dilution; however, the challenges inherent in proving dilution or tarnishment are typically quite onerous, especially when the mark is applied to goods or services that bear no relation to those originally covered by the trademark.

For instance, in Daimler Benz v. Hybo Hindustan, the Delhi High Court refused to allow dilution of the “Benz” mark despite a finding that the defendant used the mark on different goods, namely underwear. But this is not the kind of case often litigated-and indeed proves difficult to litigate.

Conclusion

The status of well-known trademark in India is complex and daunting in nature, as many legal and procedural hurdles must be crossed by the business enterprises. The evidentiary burden, high costs, inconsistent judicial interpretations, and jurisdictional complexities all add up to make it difficult for brands to avail of and enjoy such status. However, with these considerations in their minds, attaining the status of a recognized trademark involves very attractive benefits of incidental protection against infringement, dilution, and misuse.

These would involve the surmounting of a proactive role played by companies in providing extensive listing of features of reputation in the trademark and close cooperation with all legal professionals who work on developing strategies customised for the trademark landscape prevailing in India. While the Indian trademark law continues to evolve, it is going to bring much-needed efficiency in the process of determining whether a trademark qualifies as a well-known mark at least for the time being, however, it still remains a legal battlefield.

Author :  Prerna Tayal,  in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at IIPRD

References

  • Author – Shreya Singh, Issues and Challenges of Well-known Trademarks in 21st century, Manupatra, Date of Publication – 16 June 2022
  • Author – Mahak Jain & Shivam Singh, EMERGING ISSUES AND CHALLENGES IN THE PROTECTION OF TRADEMARK IN INDIA, IJALR, Date of Publication – February 2024, https://ijalr.in/wp-content/uploads/2024/03/Research-Paper.pdf
  • Author – Archana Hayaran, A well-known trademark and its benefits, Ramniwas Surajmal, Date of Publication – 17 July 2023.
  • Tata Sons Ltd. v. Manoj Dodia & Ors, 2014 SCC OnLine Del 7194
  • ITC Limited v. Philip Morris Products SA, 2010 SCC OnLine Del 27
  • Toyota Jidosha Kabushiki Kaisha v. M/s Prius Auto Industries, (2018) 2 SCC 1
  • Daimler Benz v. Hybo Hindustan, AIR 1994 Del 239



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