In this day and age of digital era, the brands are increasingly gaining popularity at a rapid pace and even transcending territorial boundaries. At times, the popularity reaches a stage where use of a brand even in relation to unrelated goods or services, evokes a connection with the original brand owner. Simply put, such famous and reputed brands are known as 'well-known' trademarks and protected by the relevant legislations of the country. There have been quite a few developments in this area of trademark law in India in the recent past and this article aims to cover them.
What is a Well-Known Trademark:
While the Indian courts have recognized the reputation and popularity of brands and even accorded them the status of well-known marks under common law for a long time, the concept of a 'well-known' trademark was formally introduced by the Trade Marks Act, 1999 ('Act').
The Act defines a well-known trademark as a mark which, in relation to any goods or services, has become so to the substantial segment of the public that its use in relation to any other goods or services would likely indicate a connection with the first-mentioned goods or services1. It is well-settled that the mark need not be known to the public at large or the society at large, but it is sufficient if the mark is well-known within a particular segment of the trade or consumers2.
Procedure to Obtain 'Well-Known' Status:
Until 2017, the 'well-known' declaration was made by the courts or registry in any contested enforcement proceedings before them as there was no procedure to have a mark declared as well-known. It was not possible to initiate separate proceedings to have a mark recognised as 'well-known'. However, the Trade Marks Rules, 2017 ('Rules'), for the first time, laid down a procedure for having a mark declared as a well-known mark by filing an application before the Registry.
As per Rule 124, to request the Registrar for determination of a trademark as 'well-known', an application has to be filed accompanied by a statement of case along with all the evidence and documents relied on by the Applicant in support of their claim. The said rule states that the declaration for a well-known mark has to be made taking into account the factors and conditions as laid down under Sections 11(6)-11(9) of the Act.
As regards the need of filing an affidavit along with the statement of case, it is now settled that documentary evidence without an affidavit can still establish 'well-known' status of the mark as the statement of case would be setting out the relevant description of the documents3. However, the requirement of filing an affidavit can be done away with only in cases where the reliance is placed solely on public documents such as an order of a Court. In all other cases, an affidavit is required to affirm to the veracity of the documents filed along with the application.
Documentary Requirement for the Declaration:
The Act provides for factors to be considered for recognition of a mark as a well-known mark such as recognition of the mark in relevant section; information regarding use and promotion of the mark; trademark registrations, details of successful enforcement actions, etc. However, the Act does not list the nature of documents required to prove well-known status. While it does not seem possible to have an exhaustive list of nature of documents required, the Delhi High Court recently observed that the documents could inter alia include4:
- Invoices showing use of the mark in a large geographical area rather than a restricted area;
- Promotion and advertising of the mark through investment made as also copies of electronic and print advertising;
- Participation in exhibitions, trade fairs, market survey, decisions of Courts enforcing the trademark in respect of related or unrelated goods;
- The consumer base for the concerned product or service and any material that would establish the recognition of the mark by the said consumer base, such as a market survey;
- Number of clearing & forwarding Agents, wholesale distributors, retail distributors, retailers;
- Exposure on e-commerce platforms;
- Any awards or recognition;
- Balance sheets, chartered accountant certificates and other accounting-related documents are needed to establish sales figures and investment on promotion, advertising, etc.
Well-Known Declaration by Court:
As stated above, the declaration for well-known status can even be made by Court in any contested proceedings before it. However, as the Rules have laid down a procedure for declaration of a mark as a well-known mark, there was no clarity on whether such declaration by the Courts will be automatically included by the Registrar in the list of well-known marks maintained by them.
The Delhi High Court analysed this issue in detail and held that 'where a trademark has been determined to be a well-known in at least one relevant section of the public in India by any Court or Registrar, no further determination on this aspect would be done by the Registrar and the trademark shall be considered a well-known trademark and the Registrar must proceed for registration under the Act'5. However, as the Act does not provide for automatic inclusion of such declarations in the list of well-known marks, the Court observed that the purpose of Rule 124 was to streamline the procedure and bring uniformity in declaration of well-known trademarks. Hence, even after a mark has been declared as a well-known mark, a request needs to be filed as per Rule 124 for inclusion of such mark in the list of well-known marks.
Retrospective Enforceability of Well-Known Marks:
The Delhi High Court recently dealt with the question of whether the owner of a well-known mark can enforce rights against the marks which were registered before the well-known status was accorded. The Court held that "declaration of a well-known trademark cannot give an automatic, unabridged, and unmitigated right to a proprietor to apply for rectification of all the marks which have subsisted on the Register for years prior and in different classes".6
The decision of the Court perfectly seems to align with the provisions of the Act, which defines an 'earlier mark', in the context of a well-known mark, as a mark which was entitled to protection as a well-known mark as on the date of application of the other mark. As such retrospective enforceability of a well-known mark cannot be guaranteed.
Concluding Remarks:
While the concept of 'well-known' mark is not new to the Indian legal jurisprudence, the introduction of a formal procedure seeking declaration of a mark as a well-known mark is fairly recent. Consequently, there have been some interesting developments in this particular landscape, and we can expect the Courts to analyse some other aspects of this topic in times to come.
Once such issue could be with regard to the validity of well-known marks. While the Rules provide the procedure for declaration of a mark as a well-known mark, there is no mention of the validity of the well-known status once declared. In fact, the list of well-known marks, as last updated on March 18, 2024, contains 281 marks with declarations dating as early as the 1980s. While the marks, at the time of declaration, may certainly have been well-known, it is possible for them to lose the well-known status over a period of time. However, the Act or the Rules do not provide for any provision to ensure that the list maintained by the Trade Marks Office only contains marks that are well-known, as on that date.
In any contested proceedings, a party can challenge the well-known status of another party's mark, and the Court/ Trade Marks Office may decide to look into the same. However, in un-contested proceedings or any proceedings where the relevant forum refuses to look into the validity of well-status of a mark, a party may get unfair advantage of the well-known declaration if such declaration falls out of the criteria of well-known mark subsequently.
Footnotes
1. Section 2(1)(zg) of the Trade Marks Act, 1999.
2. Rolex Sa vs. Alex Jewellery Pvt Ltd & Ors., IA.No.279/2008 in CS(OS) 41/2008
3. Kamdhenu Ltd. vs. The Registrar of Trade Marks, C.A. (Comm. IPD-TM) 66/2021
4. Kamdhenu Ltd. vs. The Registrar of Trade Marks, C.A. (Comm. IPD-TM) 66/2021
5. Tata SIA Airlines Ltd. vs. Union of India, W.P.(C)-IPD 64/2021
6. M/s Vans Inc. USA vs. FCB Garment Tex India (P) Ltd. & Anr., C.O. (COMM.IPD-TM) 161/2021 & I.A. 15763/2022
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