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Well Known Marks
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Well Known Trademarks
- Hema K
The well-known trademark as defined under Section 2(1) (zg) of the Trade Marks Act, 1999 provides- “well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or 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.
Well Known Marks
In 2017 under Trademark Rules it was for the very first time made a rule that now a trademark can also be registered as a well known trademark, i.e, with sufficient evidence about the mark’s good will in the public, the applicant can make an application request to determine the trademark as a
well known mark.
The said application of request should be accompanied with a statement of case, relevant documents, evidence and a fee of Rs. 1,00,000/- which has already been prescribed.
2017 Amendment
Factors to be considered
There are few factors which help to determine whether a trademark is well known. In India these factors are stated in section 11(6) of the Trademark Act, 1999;
1. Knowledge about Well Known Trademark in Public
2. Term of use of a Well Known Trademark
3. Extent of promotion of Well Known Trademark
4. The number of actual or potential customer of the goods and services
5. The number of persons involved in the channels of distribution of the goods or services.
6. The business circle dealing with the goods or services, to which the trade mark, applies.
7. Where a trade mark has been determine 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.
11 (9) – Conditions not required for well-known trademark registration
The section specifically mentions certain conditions which need not be required for the purpose of granting of well-known trademark. These conditions are-
That the TM has been used in India;
That the TM has been registered;
That the application for registration of the trade mark has been filed in India;
That the trade mark is well known in or registered in any other jurisdiction other than India;
That the trademark is well-known to the public at large in India.
Factors need not be considered
N R Dongre v Whirlpool Corp
Caterpillar Inc. v. Mehtab Ahmed
Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors
Trademark Dilution
Honda Motors Co. Ltd. v. Charanjit Singh & Ors
Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan
Cases
The Whirlpool Corporation (Whirlpool Corp.), an American entity and TVS Whirlpool, an Indian company filed a suit against N.R Dongre and others (Defendants) in India at the Delhi High Court. The Appellant-Defendants were using the name "Whirlpool" (mark) in India for manufacturing and selling washing machines. Whirlpool Corp. claimed that they were the prior users of the mark and there was a trans-border reputation indicating that any goods marketed with the use of the mark gave an impression of it being marketed by Whirlpool Corp.
Whirlpool case
Facts
The Whirlpool Corporation was the original and prior user of the trademark ‘whirlpool’ since the year 1937. The said trademark was used for their electrical goods which included washing machines. Whirlpool Corporation got its trademark registered in India in the year 1956 which was renewed regularly, however, in the year 1977 the respondents failed to do the renewal on account of which the registration expired.
Contd
In the year 1986, N.R. Dongre and others (appellants, initially defendants) applied for the registration of the trademark ‘whirlpool’ with the registrar for selling certain goods which included washing machines and in the year 1988, the said trademark was advertised for the first time in the trademark journal. Subsequently, an objection was raised by the respondents which was dismissed by the registrar on the basis of lack of reputation and non-usage of the trademark ‘whirlpool’ in India. It was further said that the usage of the trademark ‘whirlpool’ by N.R Dongre for selling his goods would not create any confusion in the market.
Proceedings
The appellants herein were granted the registration in the year 1992. In 1994, the appellants invited dealers for washing machines under the trademark of whirlpool. The respondents purchased a washing machine from the appellants and discovered that it is of inferior quality when compared to the washing machines manufactured by the respondents. Aggrieved by this, the respondents filed an action for passing off and grant of an interlocutory injunction. The learned single judge of the Delhi High Court granted a temporary injunction in 1994 and thereafter, on appeal, a division bench of the same Court affirmed the decision of the learned single judge in the year 1995. Aggrieved by this, the appellants herein approached the Hon’ble Supreme Court.
Issues
- Whether or not the action for passing off is maintainable against the registered proprietor of a trademark by the respondents who are not the registered proprietors of the ‘whirlpool’ trademark concerning washing machines?
- Whether or not the respondent acquired a transborder reputation?
- Whether such transborder reputation transcends the territorial boundaries or not?
N R Dongre
Contentions
1. Not registered
2. Not in use in India
3. No liklihood of confusion
4. Culpable delay and latches
1. Prior use
2. Their products were superior in nature
Whirlpool contention
Decision
1. Prior use
2. Whirlpool was in business since 1937 in 65 countries wherein they have continuously been in business.
3. The brand name ‘whirlpool’ was often advertised in international magazines having wide circulation in India and as a result, it was gaining a well-known reputation in India.
4. The Court also stated that since the mark ‘whirlpool’ has become synonymous with washing machines and other such electrical appliances of the respondents, the people intending to buy their goods will most likely be confused or deceived if the appellants continue to sell their goods under the same mark ‘whirlpool’.
Honda Motors Co. Ltd. v. Charanjit Singh & Ors
Honda case
Decided by the High Court of Delhi in 2002, this case
concerned the use by a local defendant of the mark HONDA in
connection with pressure cookers. Even before the filing of the
lawsuit, the parties had locked horns in 1991 before the Trade
Marks Office. An opposition by the plaintiff, Honda Motors Co.
Ltd., Japan, was granted by the Registrar of Trade Marks against
the defendant’s application to register HONDA in connection with nonelectric pressure cookers. The plaintiff assumed that after rejection of its application, the defendant stopped using the mark HONDA in connection with pressure cookers. However, in 1999, the plaintiff came across another application for registration of the mark HONDA in Class 21 with respect to “pressure cookers.”
Holding in favor of the plaintiff and enjoining the defendant,
the Court found that HONDA had a reputation for superior quality products in the field of automobiles and power equipment and that the defendant’s use of this mark in connection with pressure cookers would mislead the public into believing that the defendant’s business and goods originated from the plaintiff. The Court found that such user by the defendants had also diluted and debased the goodwill and reputation of the plaintiff
Decision
Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors
Bata case
Bata’s suit before the District Court alleged that by using the
challenged mark BATAFOAM, the defendants had been deceiving
customers and that such fraudulent and bad-faith conduct
amounted to unjust enrichment by trading off the plaintiff’s
goodwill and reputation. The defendants, however, denied these
allegations and argued that the parties’ respective businesses were
different, and that because their product was sold as BATAFOAM,
there could not be any confusion or deception
The District Court rejected the plaintiff’s claim by holding that the plaintiff had no registration for the mark BATA for mattresses, sofas, cushions, automobile seats, etc., and that because the defendants’ trademark BATAFOAM was not identical in appearance to the plaintiff’s mark BATA, there could be no passing off.
District Court
High Court
On appeal, the High Court of Allahabad reversed these
findings and found in favor of the plaintiff. It found that there was no plausible explanation as to why the name “BATA” was being used by the defendants and that the user of the name “BATA” to any product may give rise in the mind of the unwary purchaser of average intelligence and imperfect recollection that it was a product of the plaintiff.
Contd
The name “Bata” is neither a fancy name nor paternal
name nor in any way connected with the defendants. It is not
the name of a flower or fauna. It is a fancy name of a foreigner
who has established his business in making shoes and the like
products in this country. The name is well known in the
market and the user of such a name is likely to cause not only
deception in the mind of an ordinary customer but may also
cause injury to the plaintiff-Company.
Facts
The plaintiff company, Caterpillar Inc., established in 1904 in the United States, sued the local defendant before the High Court of Delhi for passing off and copyright infringement. Notably, at the time of filing the suit, the plaintiff had no registrations in India for its trademarks CATERPILLAR and CAT and for the logo marks incorporating these two trademarks.
Caterpillar case
Issues
The Court framed two issues for consideration, namely,
1. whether the trademarks CAT and CATERPILLAR, being the names of animals, could be monopolized by anyone; and
2. whether the plaintiff was required to prove use of the mark by showing sales of its goods under the mark in the country where it alleged passing off.
The Court found that an important aspect of protecting well-known marks was to avoid the weakening or dilution of the concerned mark. It found that if a subsequent user adopted a similar or near-similar mark even in respect of same goods, it would, besides decreasing the value of the trademark of the prior user, result in dilution of the mark itself.
In the opinion of the Court, it was a commercial invasion by the subsequent user and such kind of dilution or weakening of the trademark need not be accompanied by an element of confusion.
Decision
Contd
The only object of the defendants is to create deception
amongst the trade and public by clearly misrepresenting that
their goods are either licensed by the plaintiff or they are
passing off these goods as the goods of the plaintiff. Since the
goods are identical it has immense effect of diluting the
identification value of plaintiff’s mark. Such dilution is
accompanied with confusion as to source, affiliation or
connection. . . . Potential purchasers are bound to be confused
as to source, sponsorship, connection or license.
Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan
Trademark Dilution
Daimler Benz Aktiegessellschaft, Germany, the plaintiff, who owns the famous three-pointed star BENZ logo depicted above, sued the Indian underwear company for passing off. The plaintiff’s logo was registered in India in 1951.
Decision
Ignoring the defense of honest concurrent use by the
defendant, the High Court of Delhi granted the plaintiff’s
injunction and found that it would be a great perversion of the law relating to trademarks if a mark such as MERCEDES BENZ with the three-pointed star were humbled by indiscriminate imitation by anyone including persons like the defendant who made undergarments.
Contd
In the instant case, “Benz” is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user [sic] of the name “Benz” with respect to a product like under-wears.
Such a mark is not up for grabs—not available to any person to apply upon anything or goods. That name . . . is well known in India and world wide, with respect to cars, as is its symbol a three pointed star
In fact, the High Court ruled out confusion and deception by acknowledging the ubiquitous reputation of the name BENZ in connection with cars.