Well-Known Trade Mark

Have you ever asked the shopkeeper for a bottle of BISLERI rather than just a water bottle?

Have you ever wanted a pair of PUMA shoes instead of just any local brand?

Trademarks play a vital role for small and big businesses across the globe, serving a unique identity to the products and services of the business. It often happens when we hear a name and a certain image, sound or tagline pops up in our mind. This is the capability of a well-known trademark which has an influential impact on the minds of the consumer due to its brand recognition and consumer loyalty and what ultimately drives us to ask for a specific bottle of Bisleri over some local brand, or wish for a pair of Puma shoes.

Though these trademarks have acquired distinctiveness as well as global reputation in both national and international market, it has to follow certain procedure to get the status of being a well-known trademark. The status of well-known trademark is not granted based on mere unfounded hearsay. This is the reason we have popularly know some trademarks like WIPRO, Cadbury, Parle G etc. which are not blanketed with the extra layer of protection.

Well, what really is a well-known trademark? Well-known Trademark, in general terms, means the trademark which is very popularly among the consumer and have an extraordinary reputation in the market. According to the Section 2(1)(zg) of the Trademarks Act, 1999, a well-known trademark is one that has gained adequate amount of recognition among a significant percentage of the public who have shown clear preference for the goods & services of any one particular trademark over that of another to such an extent that using such a mark in relation to even other categories of goods & services would indicate a connection between the two as both being the same and being under the ambit of the same owner.

However, simply being popular is not enough. Apart from the criteria mentioned in Section 11(6) of the Trademark Act, 1999, these are the following criteria which are considered to determine the well-knownness of a trademark:

• The trademark has gained recognition among a significant part of the public.
• The time duration of the use or promotion of the mark and the geographical area where it is used or promoted.
• The duration or extent of the mark’s use or promotion, as well as the geographical area in which it is used or promoted.
• The duration of the registration of the mark under the Trade Marks Act, 1999.
• The record of any judicial decision made in favor of the mark in any opposition or infringement cases.
• The customers’ retention rate for the goods or services bearing the mark.
• The number of employees involved in the distribution of goods or services under the trademark.
• The familiarity of the mark associated with the goods or services of the trademark in the market.

Furthermore, the recognition of a trademark as “well-known” also provides numerous layers of benefits to safeguard itself from any third-party infringement, such as:

• Trans-Border Protection: Well-known trademarks enjoy protection even outside the territory of the country where it carries out its business due to the trans-border reputation of the well-known trademark.
• Multi Class Protection: Well-known trademark are strongly protected across multiple classes of goods and services. The well-known trademark is not allowed to be used by anyone dealing with different goods or services of same class or different class.
• Undiluted Enforcement: Well-known trademarks are protected from unauthorized use of a similar mark that may create confusion in the mind of the consumer, tarnish the image of the brand, or affect the distinctiveness of the originally adopted trademark. The proprietor of the well-known trademark can immediately apply for cancellation of any trademark filed in bad faith without waiting for 5 years.
• Enhanced Remedies: In case of infringement proceedings, the proprietors of well-known trademark are awarded with stronger legal remedies, such as injunctions, damages, and criminal penalties by the court.

Unlike other registered trademarks, well-known trademark enjoys a wide range of protection across all class of goods and services throughout the country. For instance, MONGINIS enjoys the status of well-known trademark in relation to cakes, pastries and other bakery products under Class 30. Thus, none other than Monginis Foods Private Limited can use the mark to sell any kinds of goods or services under any other classes.

Registration of Trademark

Before the introduction of Trademark Rules, 2017, the Intellectual Property Appellant Board (IPAB), High Courts and Supreme Court of India used to determine the well-known trademark. In the case of Whirlpool Co. and Anr. vs N.R. Dongre [1994 IVAD Delhi 667], the trademark “WHIRLPOOL” was not a registered in India. The plaintiff use to manufacture washing machine and supply it to the US Embassy in India. The defendant started business of washing machine in India by using the Trademark “WHIRLPOOL”. The Supreme Court granted injunction in favour of the plaintiff due to its trans-border reputation and held the mark well-known. In the case of International Society for Krishna Consciousness (ISKCON) Vs. Iskcon Apparel Pvt Ltd. [Commercial IP Suit (L) No. 235 OF 2020], the petitioner claimed that the word “ISKCON” was derived from the International (I) Society (SO) for Krishna (K) Consciousness (CON) which is continuously, uninterruptedly, and extensively using the word “ISKCON”. The defendant was using the name of ISKCON to sell clothes online which created an image in the minds of the consumers that the ISKCON Apparel might be a sister company of ISKCON which is selling clothes online. The High Court of Bombay passed interim order in favour of the plaintiff and held ISKCON as a well-known trademark for charitable institution.

After the introduction of the Trademark Rules, 2017, any trademark holder can request to determine its trademark as well-known trademark. The Trade Marks Rules, 2017 provide that the government fee for a Form TM-M is INR 1,00,000 and supporting documents to prove the popularity of the trademark shall be filed to initiate the process of registration of well-known trademark.

It may be intimidating for a layperson to see the entire list of evidence established by the Rule for the application process, but the gist is really simple: commercial viability. All a client really needs to submit as evidence for the application of a ‘trademark well-knowingness’ are proofs of their applicant trademark’s commercial viability in the market.

In conclusion, there is actually a veritable difference between a well-known trademark and a normal one and popularity is not the only yardstick of measurement for it. If you have a trademark you wish to register or have any query with regard to the same, feel free to reach us out at info@biswajitsarkar.com.