India: Trans-Border Reputation: Protection Of Foreign Trade Marks In India

Last Updated: 26 November 2018
Article by Mukul Baveja

Introduction

"What's in a name? That which we call a rose by any other name would smell as sweet". This famous Shakespearean quote might not hold water in today's commercial world where a branded rose with reputation would be perceived to smell better than an unbranded one. In this age of e-commerce where physical boundaries between countries have become virtually redundant, brand recognition is considered the foundation for any successful business and probably its most valuable asset. After all, Apple Inc. with a brand value of US$170 billion has become a household name and the most valuable brand in the world for a reason1. Brands no longer serve just the basic function of guaranteeing the origin of a product or service but now also hold the aura of attraction because of the reputation they command. So it does not matter if your local street cafe can make a burger tastier than McDonalds, a McDonalds branded burger would still be assumed to be better because of the reputation its brand commands all over the world. Needless to say, protection of a brand from being misappropriated, therefore, becomes highly imperative in this era of cut-throat competition.

Protecting a brand effectively is by no means an easy task. In today's global economy, where products and services are meant for consumption in multiple countries, policing of brands has become more difficult than ever before. Easy travel, access to internet, cheaply available replication technology and brand hungry consumers have made duplication of famous brands an attractive way to make a quick buck. Despite spending considerable effort and money on consumer awareness, advertisement and brand promotion, businesses often find their trade marks being diluted as a result of infringement and passing-off. In most cases, such dilution proves to be fatal to the business as its brand is much more valuable than its tangible assets.

Though brand owners are somewhat shielded in territories in which they have obtained trade mark registrations, they often have to struggle to enforce their rightful claims in countries where their brands are not registered. Not only do brand owners in such cases have to fight against counterfeits but in many cases also prove their ownership over their own brand. On a number of occasions it comes as a shock for famous business houses to learn that they are foreclosed from chartering into a new territory as their brands have been completely misappropriated and owned by third parties who have no connection with the brand whatsoever. In such cases, in order to combat third party misuse of their trade marks, foreign entities have to rely on their brand goodwill or trans-border reputation and prove that the same has spilled over in the territory of dispute. While proving trans-border reputation in a trade mark which is well-known in the territory of dispute may be a relatively easy for a foreign business, it is usually an uphill task for a foreign entity, whose trade mark is not well-known or famous in the territory of dispute, to enforce its trade mark rights, irrespective of the fact that its brand or mark may be well-known in other parts of the world. More often than not, in order to establish its trade mark rights, a foreign claimant has to rely on the common law action of passing-off rather than an infringement action as it usually does not hold any trade mark registrations in the territory of dispute2. Passing-off is considered to be the oldest of the modern legal regimes for the protection of trade marks. Broadly, an action of passing-off aims to restrict a party from misrepresenting its goods or services as that of another party in order to take advantage of the latter's reputation. One of the essential ingredients for a successful passing-off action is that the claimant must establish reputation in the marks under which he is selling his goods or offering services such that the consuming public associates those marks distinctly with the claimant's goods or services. In India, traditionally, a foreign claimant could establish its reputation in its marks only by showing some sort of trade connection with the relevant consumers in the Indian territory3. However, with India becoming a global economy and the Indian public becoming more aware about foreign brands, establishing reputation in their marks has become less stringent for foreign claimants in India. Under the new liberal approach adopted by the Indian courts, foreign claimants can now prove trans-border reputation of their marks in India and sustain an action for passing-off by adducing evidence of advertisements of their marks in any sort of media having circulation in India.

This paper focuses on the concept of trans-border reputation under the Trade Mark Law in India. The purpose is to examine whether the current Indian statutory law and judicial precedents are sufficient to protect foreign trade marks in India which have time and again been victim to third party unlawful exploitation. To this end, this paper first explains the legal framework provided for protection of foreign trade marks under international conventions and treaties, on which, the Indian statutory law for protection of foreign trade marks is based. Thereafter, it discusses the Indian statutory law for the protection of foreign trade marks. Next, the discussion proceeds to the protection accorded to foreign marks through judicial precedents in India, wherein a brief distinction with English precedents is also provided. In this section of judicial precedents, the author also scrutinizes a peculiar case in which he himself acted for the foreign claimant as a litigating lawyer at the Delhi High Court. Finally, this paper concludes by suggesting certain best practices for better protection of foreign marks in India.

THE LEGAL FRAMEWORK

International Instruments

(a) Paris Convention for the Protection of Industrial Property

Though the concept of trans-border reputation is not categorically mentioned in any of the international conventions or treaties, the international guidelines for protection of foreign marks is embodied in the recognition given to well-known marks. The term well-known mark was first mentioned in the Paris Convention for the Protection of Industrial Property ("Paris Convention")4. The Paris Convention does not define the term well-known and leaves it open for member countries to interpret its meaning in their own territories. Article 6bis5 of the Paris Convention lays down the guidelines for member countries to deal with well-known marks. Article 6bis necessitates that member countries should accord special protection to well-known marks by refusing or cancelling the registration of confusingly similar or identical trade marks and also by prohibiting their use in their respective territories. The protection given to well-known marks under Article 6bis is irrespective of the fact whether the well-known mark is registered or used in the country where it seeks protection. Therefore, Article 6bis will apply equally to an unregistered well-known mark as well and also to a well-known mark which is not used in a member country where its protection is sought.

The emphasis of Article 6bis is that the reputation of a well-known mark on its own should be able to guard it against the registration or use of a confusingly similar or identical trade mark. The rationale behind this protection accorded to well-known marks under the Paris Convention appears to be based on the principles of unfair competition, i.e. if a conflicting mark is allowed to be registered or used as an imitation of a well-known mark, it would allow the conflicting mark to take unfair advantage of its reputation and deceive the members of public and trade.

The protection for well-known marks under Article 6bis, however, is limited only to conflicting marks used for identical or similar goods. So apparently, if someone registers or uses PEPSI for shoes instead of a competing soft drink or food products, the proprietor of the well-known mark PEPSI would not be able to rely on and take any benefit under Article 6bis. Another limitation that Article 6bis poses for proprietors of well-known marks is that the protection is not available for services but only in relation to goods. So again if someone offers financial services under the PEPSI name or logo, the proprietor of the well-known mark PEPSI would not be able to take recourse under Article 6bis as the protection under it is limited to identical or similar goods only.

(b) Trade Related Aspects of Intellectual Property Rights

The World Trade Organization ("WTO") Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS Agreement")6 further strengthened the protection given to well-known marks under the Paris Convention. The TRIPS Agreement aimed at eliminating the shortcomings of the protection accorded to well-known marks under the Paris Convention by enlarging the scope of Article 6bis. Article 16(2)7 of the TRIPS Agreement extended the umbrella of protection given to well-known marks to include services, which was earlier limited to only goods under Article 6bis of the Paris Convention. Though like the Paris Convention, the TRIPS Agreement did not provide for a specific definition for well-known mark, it nevertheless laid down guidelines for member countries to determine the well-known status of a mark. Article 16(2) provides that member countries should consider knowledge of the relevant sector of public about the impugned trade mark to conclude whether that trade mark is well-known or not. The language of the guideline provided for determination of a well-known mark under Article 16(2) seems to suggest that the TRIPS Agreement proposes a broad protection to well-known marks. Since the test recommended under Article 16(2) does not create the hurdle of being well-known in the entire member territory but only in the relevant sector of public, it appears that the TRIPS Agreement attempts to provide a wide protection to well-known marks. So, for example, if the name and/or logo of JCB, which manufactures construction equipment, is familiar in the infrastructure or real estate sector of a particular territory (the relevant sector of public), it would be considered as a well-known mark even though general public at large might not be aware about JCB. Another feature of the test suggested under Article 16(2) which exhibits wide protection accorded to well-known marks is that the evidence of knowledge amongst the relevant sector of public is not limited to the use of the mark but also extends to knowledge gained through promotion or advertisement of the mark. So even if LOUIS VUITTON does not sell its products in a particular territory but advertises its mark in magazines or newspapers available in that territory, it would be considered a well-known mark as per the guidance given under Article 16(2) of the TRIPS Agreement.

Another area where the TRIPS Agreement filled the lacuna of the Paris Convention in relation to well-known marks was that of the protection given against marks used for dissimilar goods or services. Article 16(3)8 of the TRIPS Agreement introduced protection of well-known marks against dissimilar goods or services, which was earlier available only against marks used for identical or similar goods under Article 6bis of the Paris Convention. However, this extended protection under Article 16(3) is contingent upon certain pre-requisites. First, that the well-known mark should be registered in the territory where it seeks protection. Second, that the use of the conflicting trade must indicate a connection between the proprietor of the well-known mark and the goods and services for which the conflicting mark is used. Third, that the use of the conflicting mark would harm the interests of the proprietor of the registered well-known mark. It is submitted that verbatim implementation of Article 16(3) by member countries would certainly not be useful for proprietors of well-known marks that are unregistered in the territory of dispute, which is quite often the case. Such literal implementation would also pose a hurdle for the protection of well-known marks as proprietors of registered marks may find it difficult to prove the perception of a connection between them and the dissimilar goods for which the conflicting mark is used.

However, having talked about the limitations on the effectiveness of Article 16(3), it is important to mention here that the TRIPS Agreement only outlines the minimum standards that member countries must follow for the protection of intellectual property rights. Article 1(1)9 of the TRIPS Agreement gives full discretion to member countries to implement more extensive laws than provided under it. In view of Article 1(1), it is therefore open to member countries to bring even unregistered well-known marks under the ambit of protection provided under Article 16(3) and member countries may also tweak this protection for well-known marks to include situations even where the misappropriation by a conflicting mark does not establish any association between the proprietor of the well-known mark and the goods or services for which the conflicting mark is used.

(c) World Intellectual Property Organization's (WIPO) Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks10

With the view of providing harmonized guidelines in relation to well-known marks, WIPO in conjunction with the Assembly of the Paris Union proposed certain recommendations for their members in order to achieve better protection for well-known marks. The rationale for the Joint recommendation can be traced in its preface11.

The Joint Recommendation is an attempt to close the gaping loopholes of Article 6bis of the Paris Convention and Articles 16(2) and 16(3) of TRIPS. Though, again, like the Paris Convention and TRIPS, the Joint Recommendation does not provide any categorical definition for a well-known mark, it however sets out elaborate guidelines for the determination of the well-known status of a mark. Since under the Paris Convention the interpretation of well-known was left at the discretion of its members and the TRIPS Agreement provided only a nominal factor of knowledge for ascertaining a trade mark as well-known, the Joint Recommendation sought to lay down a uniform criteria for its members to determine whether a trade mark was well known in their respective territories.

Article 2(1)(b) of the Joint Recommendation lays down a non-exhaustive12 list of factors that may be considered by member countries for concluding the well-known status of a trade mark. These factors include: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; the value associated with the mark. Keeping in mind the freedom of its members to device their own tests for determination of well-known marks, Article 2(1)(c)13 of the Joint Recommendation clarifies that the factors mentioned in Article 2(1)(b) are not pre-requisites but mere guidelines for the member countries.

In Article 2(2), the Joint Recommendation further elaborates on the relevant sector of public which needs to be considered to ascertain the recognition of a mark in a particular territory. A non-exhaustive list of the relevant sectors is set out in Article 2(2)(a), which includes actual and/or potential consumers of the type of goods and/or services to which the mark applies; persons involved in channels of distribution of the type of goods and/or services to which the mark applies; business circles dealing with the type of goods and/or services to which the mark applies. Sub-Section (b) to Article 2(2) further states that a member country should recognize a mark as a well-known mark if it is well-known in either of the relevant sectors of public mentioned in Sub-Section (a). While providing these guidelines for the relevant sectors of public, the Joint Recommendation, in Article 2(2)(d), also gives liberty to member states to conclude a mark as well-known even if it is not well-known in either of the relevant sectors of public mentioned in Article 2(2)(a).

Under Article 2(3)14, The Joint Recommendation also proposes certain factors which should not be mandated by member states to determine the well-known status of a mark. Perhaps the most significant proposition that the Joint Recommendation puts forth is contained in Article 2(3)(a)(i) as it eliminates the requirement of registration of the well-known mark altogether which is required under Article 16(3) of the TRIPS Agreement in case the well-known mark seeks protection against dissimilar goods or services. Thus, it can be inferred that the Joint Recommendation goes beyond and improves upon the protection accorded to well-known marks under the TRIPS Agreement.

However, it is to be noted that because the Joint Recommendation is not a treaty and is an optional structure for member states to follow, it lacks the teeth of binding law and only has persuasive effect on the member states.

Indian Legislation

Indian trade mark law, for historical reasons, has always been heavily influenced by British law on the same subject. The Trade Marks Act of 1940, the first statute on trade mark law in India and thereafter the Trade and Merchandise Marks Act of 1958, the first statute of independent India on trade mark law, borrowed substantially from the corresponding statutes on trade mark law prevailing in the United Kingdom at that time. Maintaining this tradition, the Trade Marks Act of 1999 ("the 1999 Act") also, the current statute on trade mark law in India, is structurally quite similar to the UK Trade Marks Act of 1994.

Similar to the protection accorded to foreign marks under the UK Trade Marks Act of 1994 and in line with the guidance provided under international treaties and conventions, the protection provided to foreign marks under the 1999 Act is embodied in the special treatment given to well-known marks. Up until the introduction of the 1999 Act, foreign marks in India did not enjoy any specific statutory protection under the Indian Trade Mark law. The Trade and Merchandise Marks Act of 1958, the statute in force prior to the 1999 Act, did not stipulate any protection for famous or well-known marks and therefore foreign brands had to rely on the common law action of passing-off in order to seek recourse against trade mark misappropriation before the Indian courts. However, in compliance with India's obligations under the TRIPS Agreement, the 1999 Act introduced the concept of well-known marks into Indian trade mark law. The 1999 Act also incorporated into Indian trade mark law, the optional guidelines promulgated by WIPO's Joint Recommendation on the protection of well-known marks.

Unlike its UK counterpart, the 1999 Act lays down a categorical definition for a well-known mark under Section 2(zg) stating that "well-known trade mark", in relation to any goods or services, means an 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. In Sections 11(1)15 and 11(2)16, the 1999 Act provides relative grounds for refusal which provides protection to well-known marks against the registration of confusingly similar marks and marks which are detrimental to their reputation.

The 1999 Act also lays down a non-exhaustive list of factors for determination of the well-known status of a trade mark. These factors, which are provided under Section 11(6)17 of the 1999 Act, are a mirror reflection of the ones mentioned in Article 2(1)(b) of WIPO's Joint Recommendation. The 1999 Act further emulates WIPO's Joint Recommendation in Section 11(7)18, where it provides criteria to identify the relevant section of public for the purpose of determining whether a mark is well-known. However, the language used in Section 11(7) deviates slightly from that of its corresponding provision in WIPO's Joint Recommendation19 as it suggests taking into account the number of actual or potential customers and the number of persons involved in the trade channels, thereby narrowing the original analogous guideline of the WIPO Joint Recommendation, quantitatively. Section 11(8) of the 1999 Act provides that a mark should be considered well-known in India if it is found to be well-known in at least one relevant section of public mentioned in Section 11(7). This again is in line with Article 2(2)(b) of the WIPO Joint Recommendation. Further adherence of the 1999 Act to WIPO's Joint Recommendation can be seen in Section 11(9)20 wherein it replicates Article 2(3)(a) in verbatim to provide factors which shall not be required as a condition, for determining the well-known status of a trade mark. Broadly, these factors under Section 11(9) of the 1999 Act clarify that the well-known status of trade mark in India should not be contingent upon its use or registration in any jurisdiction.

Apart from the Section 11 provisions, the 1999 Act accords protection to well-known marks under Section 9, which lays down the absolute grounds for refusal of registration. It provides that the absolute grounds mentioned in Sub-Section (1)21 to Section 9 shall not apply in case a well-known mark seeks registration in India.

JUDICIAL PRECEDENTS IN INDIA

The chronology of judicial precedents under Indian trade mark law in respect of foreign marks reflects India's transition from a closed economy into a liberalized global market. Indian courts which at times, under the old trade mark law22, used to protect domestic companies23 even in situations of grave brand misappropriation, have over the years changed attitude to accord better protection to foreign marks. This altered approach of the Indian judiciary in recent years, in dealing with trade mark matters of foreign entities, appears to be in line with India's new liberalized economic policy initiated in the mid nineties. It also seems to be in tandem with the radical changes incorporated in the Trade Marks Act of 1999 for better protection of foreign marks, which were introduced in compliance with India's obligations under the TRIPS Agreement.

Over the years, Indian courts have heavily relied on judicial precedents of the United Kingdom for guidance on several concepts under trade mark law. Unsurprisingly, English precedents find extensive mention in cases involving protection of foreign marks in India. However, even as Indian courts have discussed English judgments at length while deciding disputes involving foreign trade marks, they have not really adhered with the traditional English jurisprudence in this area of trade mark law. The line of thought followed by Indian courts on the protection of foreign marks shows a clear departure from the classical English approach, which insists on the presence of goodwill for a successful action against passing off. Perhaps the reason for this divergent view of the Indian courts is that they do not distinguish between goodwill and reputation, unlike their English counterparts. English jurisprudence suggests that goodwill is a form of legal property, representing a connection between business and customer. For goodwill to exist there must be some business or market in the territory of dispute24. Reputation, on the other hand, does not require presence of any business in the territory of dispute and is a question of fact which aims to determine the knowledge of the people in that territory about the impugned indicia. In UK, a foreign claimant, to make its case good, must show that it has acquired goodwill in the territory of dispute either through business activities or by showing presence of customers in that territory. Several precedents in the UK validate the ideology that it is goodwill and not mere reputation that is required by a foreign claimant to sustain an action for passing off.25 Indian courts have, however, rejected this English school of thought by treating goodwill and reputation synonymously and not as two distinct concepts.

One of the first cases, in which Indian courts categorically rejected this distinction between goodwill and reputation, was Kamal Trading Co. v. Gillette UK Limited26. In this case, an injunction was sought by the claimant against the use of the mark "7 o' Clock" by an Indian company. The question for consideration before the Division Bench of the Bombay High Court was whether the goodwill in the trade mark "7 o' Clock" stood extinguished because of non-availability of blades bearing the said mark in India after the year 1958. While deciding in favour of the claimant and rejecting the approach taken by the English Court of Appeal in the Budweiser27 case, the Bombay High Court held28:

"We must express our dissent with the view taken in this case. In our judgment it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation."

A similar view was taken by the Delhi High Court in Apple Computer Inc. v. Apple Leasing & Industries29, thereby following the approach of the Bombay High Court in the Kamal Trading case30. This case involved an action against the use of "Apple Computer Education" by an Indian entity. While acknowledging the foreign claimant's reputation in the mark Apple in relation to computers and laying emphasis on the reputation gained by the claimant through advertisement and publicity, the court observed31:

"it is not necessary in the context of the present day circumstances, the free exchange of information and through newspapers, magazines, video, television, movies, freedom of travel between various parts of the world to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. In passing-off cases, the main consideration is the likelihood of confusion and consequential injury to the plaintiff, and the need to protect the public from deception, deliberate or otherwise. Where such confusion or deception is prima facie shown to exist, protection should be given by courts to the name or mark or goodwill of the plaintiff. The reason why all traders and manufacturers of goods, and providers of services, wish to protect their name and build up their name is that they want their name or market to have an impact upon anyone who has need their goods or services. That impact may take diverse forms, but one of them would certainly be that a name or mark would recall to the mind of a potential consumer or user of such services, the source from where the goods originate, or the person who provides the services. This is the impact of advertising and publicity by whatever means, including word of mouth, and the build-up of reputation. It would not be right for courts to permit the persons who have spent considerable time, effort, money and energy in building up a name, sufficient to have an impact to lose control over such an impact by improper use of the very same or colourably similar name by another unauthorisedly or even dishonestly."

It can be clearly noticed from these observations in the Kamal Trading case32 and the Apple Computer case33 that Indian courts do not distinguish between goodwill and reputation and in fact use these terms interchangeably in disputes involving protection of foreign marks. The focus of Indian courts in such cases is rather on the aspect whether the fame of the foreign claimant has transcended international borders and is known amongst the relevant section of public in India.

One of the first cases which formally recognized the concept of trans-border reputation in trade mark disputes involving foreign claimant's and discussed this concept at length was Whirlpool Co. v. N.R. Dongre34(Whirlpool Case). This case involved a dispute over the mark 'WHIRLPOOL' for washing machines. Based on the presence of the claimant's washing machines at the American Embassy in India and the advertisements of the claimant's products under the 'WHIRPOOL' in international magazines having circulation in India, Justice Lahoti of the Delhi High Court ruled in favour of the claimant and observed35:

"inspite of non registration of the trade mark in India, the plaintiff was trading in Whirlpool products in several parts of the world and also sending the same to India though in a limited circle. Whirlpool associated with the plaintiff No. 1 was gaining reputation throughout the world. The reputation was traveling trans-border to India as well through commercial publicity made in magazines which are available in or brought in India. These magazines do have a circulation in the higher and upper middle income strata of Indian society. Washing machine is a household appliance used by the middle and upper clefs of the society. The plaintiff No. 1 can bank upon trans-border reputation of its product washing machine for the purpose of maintaining passing off action in India."

Justice Lahoti, while highlighting the changing economic policy in India and stressing on the need for a comprehensive examination on the concept of trans-border reputation, stated36:

"Nobody shall be permitted to acquire for the benefit of oneself by using false means or misleading devices the benefit of reputation and goodwill earned by someone else. This is too good as a principle and also as law applicable to any country but what about its extension trans-border? India is moving towards free economy. The drastic changes in the economic policy of the country which are in offing is sure to entail entry-fresh and afresh-of multi-nationals in the Indian market. The common law of passing off is sure to undergo a change. With the synchronisation of the world, law cannot afford to remain conservative. Still the need of examining the concept of "trans-border reputation" by reference to its impact on the Indian economy and Indian industries cannot be ruled out. The concept needs a thorough and in-depth examination. Better if it is done by a larger bench.

Justice Lahoti did not have to wait much for his request as the Whirlpool case was appealed and the Division Bench of the Delhi High Court had the occasion to examine the concept of trans-border reputation in detail. In its judgment37, the Division Bench upheld Justice Lahoti's decision and stressed that it is the knowledge amongst the people about the goods and the trade marks under which they are sold, irrespective of the availability of those goods, which determines the goodwill or reputation of those goods in the country. While holding that dispersion of knowledge of a trade mark through advertisement amounts to use of trade mark in India, the Division Bench observed38:

"In today's world it cannot he said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation & appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit & disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market."

Just before the operative part of its judgment, the Division Bench also stated on a concluding note that the manner and method by which the knowledge of the mark is acquired by the public is of no consequence and is thus immaterial where a domestic entity tries to misappropriate the mark of a foreign trader39. The decisions of Justice Lahoti and the Division Bench in the Whirlpool case were later affirmed by the Supreme Court of India in its judgment40 on an appeal preferred by the Indian party in the dispute.

The decision in the Whirlpool case is considered a landmark judgment on the concept of trans-border reputation under Indian trade mark law. It has been quoted as a leading judgment in several subsequent precedents41 involving disputes of foreign marks, wherein Indian courts have accorded protection to the spill-over reputation of foreign claimants.

The proactive approach of the Indian judiciary in protecting foreign marks can be seen in the case of William Grant & Sons Ltd. v. McDowell & Co. Ltd.42, where the dispute did not concern similar marks per se but a deceptively similar trade dress. In this case, although the Indian entity was using the mark 'McDowell's Single Malt whisky' for its liquor product, which was absolutely distinct from the foreign claimant's 'Glenfiddich' mark, it was selling its product under a label that had a similar get up as that of the claimant's product. While suggesting that trade dress forms part of a trade mark, Justice Narain of the Delhi High Court observed43:

"In my view, a label is a device which is affixed by a manufacturer on a product/article and contains material placed upon it by the manufacturer of the goods so as to distinguish his own goods from the goods of the other manufacturers, and contains information regarding the nature and quality of the product, or goods to which the label is appended or affixed."

In holding that the claimant's 'Glenfiddich' whisky has trans-border reputation in India, Justice Narain, apart from taking note of the advertisements of the claimant's whisky in magazines having circulation in India, also took into consideration the fact that the claimant's 'Glenfiddich' whisky was available at duty free shops in India44. Another interesting observation made by Justice Narain in this case was that because whisky is a potable product, it is the label on it which makes the product distinctive and therefore, if a deceptively similar label is used for another whisky which does not taste like the claimant's whisky it would injure the reputation of the claimant45. Finally, while rejecting the argument of the Indian company that people would not be misled as the impugned whiskey's have totally different names, Justice Narain stated46:

"I think that in cases of transborder reputation, the question of likelihood deception loses its significance in passing off action, and what becomes more important, is whether use of something by the defendant, out of the whole used by the plaintiff, is deceptively similar to what is of the plaintiff that it could lead to erosion of the reputation of the plaintiff, erosion of what is distinctive, especially so in the case of potable products which cannot bear a mark and only their containers can have a label. In case of a potable product like the potable products in the instant case, the Glenfiddich whisky, having admittedly existed prior to coming into the existence of the defendant. The reputation of Glenfiddjch which is inseparably linked with the label of Glenfiddich Single Malt Whisky bottle is bound to be eroded by another Single Malt Whisky which bears the label which has very close similarity to the label of the plaintiff."

Thus, dilution of a foreign trade mark has also been considered by Indian courts as an important factor in upholding a passing-off action against a domestic entity. Apart from protecting foreign marks against misappropriation involving similar goods, Indian courts have, on numerous occasions, extended this protection in cases involving dissimilar goods on the basis of dilution of foreign marks. In Daimler Benz Aktiegesellschaft v. Hybo Hindustan47, the dispute involved the use of the claimant's 'Benz' mark and the 'three pointed star logo' on undergarments, which marks were in fact famous all around the world for premium cars. The Delhi High Court, while deciding in favour of the claimant and recognizing the well-known status of the claimant's mark observed48:

"It will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the "Mercedes Benz", its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs -- not available to any person to apply upon anything or goods. That name which is well known in India and worldwide, with respect to cars, as is its symbol a three pointed star."

The court further held that anyone in India who is conscious of the existence of automobiles would know that the 'Benz' mark and its accompanying 'three pointed star logo' is used in relation to premium cars from Germany and thus it would be implausible to think that the said mark and logo is not well-known in India49.

Similarly in Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat (India)50, the dispute involved misappropriation of a foreign mark which was being used for goods different from that of the claimant. In this case, the claimant's 'Volvo' mark, which is famous for automobiles, was being used by the defendant company in its corporate name and for trading in steel. The Bombay High Court decided in favor of the claimant and held that its 'Volvo' mark has trans-border reputation in India based on the advertisements made by the claimant in the Indian market. An interesting point to note in the observations made by the court was that the court in upholding the claimant's rights not only took into consideration the advertisements of the claimant in magazines and newspapers but also the fact that the claimant had sponsored various sporting events around the world, including the Davis Cup in India in 198651. The Volvo case also paved path for Indian courts to consider subsequent events, i.e. events after the institution of the suit, for the grant of relief in cases involving foreign marks. The Bombay High Court while deciding in favour of the claimant took note of the fact that after the institution of the suit the claimant had entered into contracts with different entities in India to manufacture automobiles under the 'Volvo' mark 52.

The liberal approach of the Indian courts in protecting foreign marks can be seen in an unusual case decided by the Delhi High Court in 2001. In Playboy Enterprises, Inc. v. Bharat Malik53, the Delhi High Court decided in favour of the claimant despite the fact that the claimant's adult magazines were banned in India. This obviously meant that even the advertisements or publicity of such magazines were banned in India and therefore under established norms it could not have been said that the public in India was aware about the claimant's 'PLAYBOY' magazine. Advertisements in the absence of actual goods have been traditionally considered a pre-requisite by Indian courts for a claimant to establish trans-border reputation in India. However, in this case the Delhi High Court ignored the fact that neither the magazine of the claimant nor its advertisements had any circulation in India and decided in favour of the claimant. The defendant in this case was accused of passing-off by printing and selling adult magazines under the title 'PLAYWAY'. While holding that the claimant's 'PLAYBOY' mark has trans-border reputation in India, Justice J.D. Kapoor of the Delhi High Court observed54:

"In the present day world even goods of unregistered mark and banned items like the one in question get more in circulation partly out of curiosity and mainly if they capture the imagination of its consumers and thereby gain wide-spread reputation and goodwill as tourists, travelers, embassies and even smugglers are their active channels."

The above explanation given by Justice Kapoor does not seem to be satisfactory as there was no actual evidence of any circulation of the claimant's 'PLAYBOY' magazine in India. Nevertheless, he decided to protect the claimant's mark 'PLAYBOY' by upholding its passing-off action. Perhaps, with the above finding, Justice Kapoor wanted to indirectly state that he himself was aware about the famous adult magazine of the claimant.

The law on protection of foreign trade marks took a big leap in the case of Milmet Oftho Industries v. Allergan Inc.55 This case involved a dispute between two pharmaceutical companies over an identical mark. Both the claimant and the defendant were using the mark 'OCUFLOX' in respect of an eye care product. The defendant argued that it introduced the medicinal product under the 'OCUFLOX' mark in India first and therefore it should succeed against the claimant. The Supreme Court while deciding in favour of the foreign claimant stated that in present times the field of medicine is of an international character and that medical practitioners or companies connected with the medical field keep abreast with the latest developments in medicinal preparations worldwide56. Thus, according to the Supreme Court, the mere fact that the claimant has not been using the mark in India would be irrelevant if they introduced the mark prior to the defendant in the world market57. However, being cautious of the fact that the judgment in this case may be quoted as a precedent by foreign companies to stifle domestic Indian companies in subsequent cases, the Supreme Court concluded on a cautionary note58:

"However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market."

The judgment in the Milmet Oftho case gave a whole new dimension to the law on protection of foreign trade marks as according to the ratio of the judgment foreign entities could now protect their marks solely on the basis of their prior use in the world provided an intention of doing business in India could be shown. However, in the case of Century 21 Real Estate LLC. v. Century 21 Main Realty Pvt. Ltd.59, the Delhi High Court did not agree with the underlying purport of the judgment in the Milmet Oftho case. The author of this paper acted as the litigating counsel for the claimant in this case, wherein an injunction was sought against the use of the mark 'CENTURY 21'. The defendant company, which was in the same field of business as that of the claimant, i.e. real estate brokerage services, was using the 'CENTURY 21' mark of the claimant in its corporate name. Though the claimant was not doing business in India, it alleged both infringement and passing-off as it held trade mark registrations in its name in India for the mark 'CENTURY 21'. In order to make its case good, the claimant put forth a plethora of evidence before the court which included trade mark registrations for the impugned mark in several countries, advertisements in newspapers and magazines having circulation in an number of countries but not India, global awards and accolades received by the claimant company over the years and independent surveys quoting 'CENTURY 21' as one of the top brands in the United States. The claimant also provided its global revenue and advertising figures to show its gigantic scale of worldwide business operations. In addition, the claimant stated in the pleadings that it is a multinational company with over seven thousand offices spread across forty two countries and that it got incorporated in the United States in the year 1971 which was much prior to the incorporation of the defendant company in the year 2003. Justice Dhingra of the Delhi High Court was however unimpressed with the evidence and arguments advanced by the claimant before the court. According to him, the fact that the claimant was first in the world to use the 'CENTURY 21' mark was irrelevant as the claimant failed to adduce any evidence of its intention to conduct business in India. The argument of the claimant that Indian parties interested in obtaining franchisee of the claimant were concerned about the unlawful use of the 'CENTURY 21' mark by the Defendant company and because of which it was foreclosed from starting business operations in India was also rejected by the judge as an afterthought. Justice Dhingra also disapproved the reliance placed by the claimant on a number of Indian precedents on trans-border reputation. He rejected the set of precedents on trans-border reputation which included the Kamal Trading case, the Whirlpool case, the Glenfiddich case, the Benz case and the Volvo case as according to him in all these cases either the goods or advertisements bearing the foreign mark were in circulation in India, which was not the situation in the instant case as the claimant was neither providing any services in India nor advertising in any media having circulation in the Indian territory. Though the fact of the claimant's Indian trade mark registration for the mark 'CENTURY 21' was taken in to account by Justice Dhingra, he held that mere registration of the mark does not amount to use of the mark in India. He, therefore, decided in favour of the defendant company holding that the claimant had failed in establishing its trans-border reputation associated with the 'CENTURY 21' in India60.

The judgment in the Century 21 case shows that the law on protection of foreign marks in India is more or less settled. If a foreign entity wants seeks to protect its marks in India, it would have to establish its trans-border reputation by proving knowledge of its marks amongst the relevant section of public in India. The most convenient and accepted method for this appears to be through the medium of advertisements. Although advertisements from any source, be it television, radio, magazines or newspapers, are taken into consideration by Indian courts, only advertisements which are in circulation in the Indian territory are considered relevant for proving trans-border reputation in India. This can also be seen from a very recent judgment, of December, 2017, of the Supreme Court in the case of Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd & Ors.61. The dispute involved use of the mark 'PRIUS' by the defendant in its corporate name, which according to the claimant was a well-known mark in relation to the claimant's commercial hybrid car. The claimant argued that its hybrid car under the name 'PRIUS' was first launched in Japan in the year 1997 and that this launch was widely reported world over including India. The defendant, who was in the business of selling automobile spare parts, on the other claimed to have used the name 'PRIUS' since the year 2001 and argued that it honestly adopted this name without any knowledge of the claimant's 'PRIUS' car model. The court, however, decided in favour of the defendant by agreeing with the observations made by the Division Bench of the Delhi High Court (whose decision was appealed before the Supreme Court) that the 'PRIUS' car model of the claimant did not have the necessary reputation and goodwill in India at the relevant time, i.e. 2001, when the defendant first started using the same mark in its corporate name. While holding that the trade mark 'PRIUS' of the claimant had undoubtedly acquired a great deal of goodwill in several other jurisdictions in the world, the court observed62:

"The advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet, even if accepted, will not be a safe basis to hold the existence of the necessary goodwill and reputation of the product in the Indian market at the relevant point of time, particularly having regard to the limited online exposure at that point of time, i.e., in the year 2001. The news items relating to the launching of the product in Japan isolatedly and singularly in the Economic Times (Issues dated 27.03.1997 and 15.12.1997) also do not firmly establish the acquisition and existence of goodwill and reputation of the brand name in the Indian market"

The court, therefore, held that the 'PRIUS' car model of the claimant had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market so as to vest in the claimant the necessary attributes of the right of a prior user so as to successfully maintain an action of passing-off. Similar to the situation in the Century 21 case, there was evidence in the Prius case that the claimant had been using its 'PRIUS' mark since 1997 which was prior to the adoption of the defendant company's use of the same mark in 2001. However, despite the defendant using an identical mark and operating in an allied field of business (automobile spare parts), the court still decided in favour of the defendant. Thus, it can clearly be inferred from the judgments in the Century 21 and Prius cases that despite evidence of prior user and prima facie indication of slavish imitation, a foreign trade mark would not be protected by Indian courts unless the foreign claimant could prove that the knowledge of its mark has trickled down amongst the relevant section of public in India.

CONCLUSION

Businesses in the present day commercial world are no longer confined by geographic boundaries. The world has indeed become small in terms of global trade where economies have opened up, transportation has become more efficient, and sophisticated channels of providing goods and services have emerged. As a natural consequence, recognition of brands has expanded from the stereotypic concept of having popularity only in the place of origin of goods or services to the phenomenon of gaining international reputation in the regions where such goods and services are offered. Even at places where such goods and services are not offered, increased consumer awareness, through foreign travel and media exposure in the form of satellite television and publications having international circulation, has led to the spilling over of their brand goodwill in these territories and conceptualization of the doctrine of trans-border reputation of trade marks.

The multi-jurisdictional character of a trade mark's reputation inevitably calls for its protection from imitators as otherwise the mark is vulnerable to brand dilution and loosing goodwill with customers who identify it with good quality products or services. Obtaining trade mark registrations in every country is often not feasible for multi-national companies both economically and also because in most countries, trade mark registrations without use in relation to a business, run the risk of being annulled. Obviously, this makes trade marks of a foreign entity susceptible to misappropriation and it usually has to rely on an action of passing-off to enforce its rightful claims in relation to its trade marks. In passing-off cases involving foreign entities, it is usually the strict or liberal ideology of the judiciary which turns the scales in favour or against a foreign claimant. Where, on one hand, judges in the UK adopt a stringent approach and insist on the presence of business or customers in the territory of dispute for upholding a passing-off action of a foreign claimant, their counterparts in India, on the other hand, do not approve of such approach and accept, for a successful passing-off action, any evidence put forth by the foreign claimant which can prove its reputation amongst the relevant public in India.

Indian law on the protection of foreign trade marks has evolved with the passage of time. The narrow approach of the Indian judiciary in the early nineties, to protect domestic companies from claimants of foreign trade marks, has over the years progressed towards a much more broad minded line of thought, which appears to be in tandem with the changing socio-economic conditions in India. Indian statutory law, i.e. the Trade Marks Act of 1999, has also undergone a radical change for the better protection of foreign marks by incorporating safeguards for well-known marks as suggested by international conventions and treaties. Indian precedents from the mid-nineties onwards, such as the Whirlpool case, suggest that courts in India would accept even the slightest of evidence on the knowledge of the foreign mark amongst the relevant Indian consumers, in order to uphold the trans-border reputation of the foreign claimant in its marks. Dissemination of knowledge, amongst the Indian public, through publicity or advertisements seems to be the most acceptable medium before Indian courts for proving trans-border reputation of foreign marks. However, the Century 21 case and the Prius case seem to suggest that the law in India in this area is inadequate in cases where a foreign claimant is unable to adduce any evidence of publicity of its marks in the media having circulation in India and consequently is unable to prove trans-border reputation of its marks in India, irrespective of the fact that those marks have been used prior in time and are famous in multiple countries across the globe.

While the predicament of genuine foreign claimants in some situations, such as those in the Century 21 case and the Prius case, continues to exist in the Indian jurisprudence on protection of foreign trade marks, the author intends to suggest certain best practices for foreign claimants which may enable them to overcome these difficulties in proving trans-border reputation of their marks and assist in enforcing an effective claim before Indian courts. Firstly, a straightforward best practice for a foreign claimant, whose marks are not in commercial use in India and lack exposure in the Indian print media or media having circulation in India, would be to advertise its marks in Indian newspapers or relevant trade magazines. It may not be necessary to advertise in every Indian newspaper or magazine as the law requires that knowledge amongst the relevant section of public would be sufficient to uphold trans-border reputation of a foreign mark. So if the foreign mark is for sporting equipment, advertisements in a sports magazine would suffice or if the foreign mark is for financial services, advertisements in a financial newspaper would be adequate. However, such advertisement should not be sparse and should be made regularly over a considerable period of time. The advertisements in Indian magazines or newspapers may also prove to be a helpful tool in showing intention of doing business in India. Intention of a foreign claimant of doing business in India has been considered as a crucial factor in a successful passing-off claim, as can be seen in the Supreme Court judgment in the Milmet Oftho case. Secondly, where the marks of a foreign claimant lack sufficient publicity through advertisements in the media having circulation in India, the foreign claimant should undertake surveys through independent agencies such as AC Nielsen or Ipsos, to prove knowledge of its marks amongst the relevant section of public in India. Such surveys would be considered favourably by Indian courts as knowledge amongst the relevant public in India is the only threshold for proving trans-border reputation in the Indian territory. Thirdly, if a foreign claimant has gained knowledge of misappropriation of its marks in India and has initiated communication with the domestic offender, e.g. through a cease and desist letter, the foreign claimant should within a reasonable amount of time63 initiate court proceedings, if the offender refuses to budge. Delay sometimes can be fatal for the rightful claims of a foreign entity even in the most blatant cases of trade mark violation. This can be inferred from the case of Khoday Distilleries Ltd. v. Scotch Whisky Association64 , wherein the Scottish claimant failed in its passing-off action against the use of 'PETER SCOT' despite the fact that the claimant had been previously successful in a number of similar cases65 before Indian courts. The Supreme Court denied relief to the claimant in this case as it was established that the claimant's passing-off action suffered with delay of twelve years and because of which it had acquiesced its trade mark rights.

Fourthly, and most importantly, if a foreign claimant has cogent evidence to prove that its mark has gained sufficient goodwill and reputation among the relevant section of public in India in respect of the said mark, it should consider filing an application before the Indian Trade Marks Office for declaration of the well-known status of its mark. This provision of obtaining such a declaration from the Trade Marks Office was recently introduced in India through the amended Trade Mark Rules in March, 2017. By obtaining such declaration of a well-known status, in relation to its mark, a foreign claimant would not only be guarded against unscrupulous third parties trying to obtain trade mark registrations for identical/deceptively similar marks in India but it could also possibly assist a foreign claimant in discharging the burden of adducing further evidence in a court of law in the event of a contentious matter. Consequently, this may result in better protection of foreign trade marks in India.

Footnotes

1. [Source: https://www.forbes.com/powerful-brands/list/#tab:rank]

2. Under the Trade Mark statutes of most countries, an infringement action for a trade mark can only be instituted if the claimant holds trade mark registration for the impugned mark in the territory of dispute.

3. As in Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. (1994 PTC 53), wherein the Calcutta High Court rejected the foreign claimant's action to protect its marks because its goods were physically not present in India.

4.The original convention of 1883 has been subject to several subsequent revisions. It was revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967. The convention was thereafter amended on September 28, 1979. [Source: http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html]

5.Article 6bis

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

6. The TRIPS Agreement was signed on April 15, 1994, at Marrakesh, Morocco as part of the General Agreement on Tariffs and Trade (GATT) administered by the World Trade Organization.

7. Article 16(2): Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trade mark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trade mark.

8. Article 16(3): Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

9. Article 1(1): Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

10. The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, which includes the text of the provisions as adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), at its second session, second part (June 7 to 11, 1999), was adopted at a joint session of the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO (September 20 to 29, 1999).

11. Preface (Para 3): The Recommendation is the first implementation of WIPO's policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles.

12. "Article 2(1) [Factors for Consideration]

(a) In determining whether a mark is a well-known mark, the competent authority shall take into account any circumstances from which it may be inferred that the mark is well known.

(b) In particular, the competent authority shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not limited to, information concerning the following...."

13. Article 2(1)(c): The above factors, which are guidelines to assist the competent authority to determine whether the mark is a well-known mark, are not pre-conditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in subparagraph (b), above.

14. Article 2(3): [Factors Which Shall Not Be Required]

(a) A Member State shall not require, as a condition for determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State;

(ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State.

(b) Notwithstanding subparagraph (a)(ii), a Member State may, for the purpose of applying paragraph (2)(d), require that the mark be well known in one or more jurisdictions other than the Member State.

15. Section 11 (1) Save as provided in Section 12, a trade mark shall not be registered if, because of ----

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

16. Section 11(2) A trade mark which----

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,

shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

17. Section 11(6): The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he consider relevant for determining a trade mark as a well-known trade mark including--

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of, the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

18. Section 11(7): The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account –

(i) the number of actual or potential consumers of the goods or services

(ii) the number of persons involved in the channels of distribution of the goods or services,

(iii) the business circles dealing with the goods or services to which that trade mark applies.

19. Article 2(2)(a) of WIPO's Joint Recommendation

20. Section 11(9): The Registrar shall not require as a condition for determining whether a trade mark is a well-known trade mark, any of the following, namely----

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark---

(a) is well-known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.

21. Section 9 (1) The trade marks------

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

shall not be registered :

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

22. The Trade and Merchandise Marks Act of 1958

23. In Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. (1994 PTC 53), the Calcutta High Court protected an Indian company using the mark 'Tosiba' for domestic electrical appliances even though the Claimant's mark 'Toshiba' was well-known throughout the world for various electronic devices.

24. In Sheraton Corp. v. Sheraton Motels [1964] RPC 202, the court held that, although the claimant did not have any hotels in the UK, the fact that bookings for its hotels abroad were frequently made both through an office which it maintained in London and through travel agencies, was sufficient to establish goodwill in the UK and entitle the the claimant to the relief; Bentley & Sherman, Third Edition, at pg. 738

Also in Athlete's Foot Marketing Association Inc. v. Cobra Sports [1980] RPC 343, the court declined relief to the American claimant as it could not adduce any evidence of customers in the UK and therefore could not prove any business activity in the UK. Given that the claimant had no customers in the UK, the court held that the claimant did not have the necessary goodwill to sustain the passing off action; Bently & Sherman, Third Edition, at pg.739

25. In Anheuser-Busch v. Budejovicky Budvar [1984] FSR 413, though the claimant's beer 'BUDWEISER' was available only on American Air bases in the UK, it was widely known throughout the UK territory. The Court of Appeal rejected the claimant's claim on the basis that there was no goodwill in the UK. As the beer sold on Air Force Bases was not available for general purchase, the court held that these sales were to be ignored. In rejecting the action of the claimant, the court supported the view that mere reputation alone would not justify an action for passing off; Bentley & Sherman, Third Edition, at pg 741

Also Bentley and Sherman commenting on the judgment of Browne Wilkinson VC in Peter Waterman v. CBS [1993] EMLR 27: "Despite these comments and his liberal interpretation of the case law, the Vice Chancellor was not prepared to abandon the requirement that, to establish goodwill, a foreign trader must have customers in the United Kingdom. This reluctance to allow an action based merely on reputation may have been grounded in a fear that if such a prerequisite was abandoned it would enable claimants with an international reputation to enforce a worldwide monopoly without any guarantee that they will ever expand into the domestic market; Bently & Sherman, Third Edition, at pg.741

26. 1988 PTC 1

27. [1984] F.S.R. 413

28. 1988 PTC 1, at para 109

29. 1991 (18) IPLR Delhi 63

30. 1988 PTC 1

31. 1991 (18) IPLR Delhi 63, at para 159

32. 1988 PTC 1

33. 1991 (18) IPLR Delhi 63

34. 1994 (56) DLT 304

35. 1994 (56) DLT 304 at para 19

36. 1994 (56) DLT 304 at para 34

37. AIR 1995 Delhi 300

38. AIR 1995 Delhi 300 at para 15

39. AIR 1995 Delhi 300 at para 43

40. (1996) 5 SCC 714

41. Alfred Dunhill Ltd. v. Kartar Singh [MANU/DE/0201/1997], claimant's 'DUNHILL' mark clothing and accessories protected; Caesar Park Hotels and Resorts Inc. v. Westinn Hospitality Services Ltd. [AIR 1999 Mad 396], claimant's 'WESTIN' for hotels protected; The Gillette Company v. A.K. Stationery [MANU/DE/0786/2001], claimant's 'FLEXGRIP' mark for writing instruments protected; Mars Incorporated v. A.K. Gera [2001 (94) DLT 906], claimant's 'MILKY WAY mark for confectionary products protected; Caterpillar Inc. v. Mehtab Ahmed [2002 (99) DLT 678], claimant's 'CATERPILLAR' mark for footwear protected; Jolen Inc. v. Doctor & Company [2002 (25) PTC 29 (Del)], claimant's 'JOLEN' mark for cosmetics protected; Pizza Hut International LLC v. Pizza Hut India Pvt. Ltd. [2003 (26) PTC 208 (Bom)], claimant's 'PIZZA HUT' mark for restaurants protected; Pepsico Inc. v. Sunrise Beverages [2004 (28) PTC 415 (Del)], claimant's '7UP' for soft drinks protected; George V. Records, SARL v. Kiran Jogani [2004(28)PTC347(Del)], claimant's 'BUDDHA-BAR' mark for music albums protected; V and S Vin Spirit AB v. Kullu Valley Mineral Water Co. [2005 (30) PTC 47 (Del)], claimant's 'ABSOLUT' mark for alcoholic and soft drinks protected.

42. 1994 (55) DLT 80

43. 1994 (55) DLT 80, at para 37

44. 1994 (55) DLT 80, at para 95

45. 1994 (55) DLT 80, at para 98

46. 1994 (55) DLT 80, at para 128

47. AIR 1994 Delhi 239

48. AIR 1994 Delhi 239, at para 5

49. AIR 1994 Delhi 239, at para 14

50. 1998 PTC 18

51. 1998 PTC 18, at paras 66 and 67

52. 1998 PTC 18, at paras 76 and 77

53. 91 (2001) DLT 321

54. 91 (2001) DLT 321, at para 33

55. 2004 (28) PTC 585 (SC)

56. 2004 (28) PTC 585 (SC), at para 8

57. 2004 (28) PTC 585 (SC), at para 9

58. 2004 (28) PTC 585 (SC), at para 8

59. MIPR 2010 (2) 43

60. MIPR 2010 (2) 43, at paras 5, 6 and 7

61. (Civil Appeal Nos. 5375-5377 of 2017)

62. (Civil Appeal Nos. 5375-5377 of 2017), at para 32

63. The Indian law of limitation provides three years' time to initiate court proceedings from the date of cause of action. Cause of action arises when the claimant acquires knowledge of the offending activity of the defendant.

64. 2008(37) PTC 413 (SC)

65. Scotch Whisky Association v. Golden Bottling Co. [2006 (32) PTC 656 (Del)]; Scotch Whisky Association v. Dyer Meakin Breweries Ltd. [MANU/DE/0229/1971]; Mohan Meakin Breweries Ltd. v. Scotch Whisky Association [17 (1980) DLT 466]

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