Posted on by Nikhilesh Mallick

Acknowledging the use of Well-known Trademarks in India

The trademark “WHIRLPOOL” in India expired in 1977 as a result of the Whirlpool Corporation (henceforth referred to as “Whirlpool Corp.“) neglecting to renew it. Whirlpool Corp. had been using its trademark since 1937 and had successfully registered it in India in 1956. However, the company made a mistake by not renewing the trademark in 1977, which allowed N.R. Dongre and others to register the trademark “WHIRLPOOL” in 1988. Luckily for Whirlpool Corp., an injunction was issued in their favour because the Court recognized the high level of recognition associated with their trademark, “WHIRLPOOL. “Well-known trademarks enjoy a high level of protection, as demonstrated by the current case of N.R. Dongre and Ors. Vs. Whirlpool Corporation and Ors. Whirlpool Corp. failed to renew the registration for the trademark “WHIRLPOOL,” but the trademark was still protected by the law because of the goodwill and reputation it had gained.

The purpose of the instant article is to clarify the subtleties of well-known trademarks.

WELL-KNOWN TRADEMARK – WHAT IS IT?

The Paris Convention for the Protection of Industrial Property (also known as “the Paris Convention”) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (often known as “TRIPs”) are the sources of the history of the doctrine of well-known trademarks.

The Paris Convention’s Article 6b is originally established the doctrine, allowing member states “to refuse or to cancel the registration, and to prohibit the use” of a later trademark if it was likely to cause confusion with an earlier trademark that was well-known in the nation of “registration or use,” even though the earlier trademark’s non-registration in the member state would have guaranteed its protection. However, through the TRIPs’ Article 16, the doctrine’s reach was expanded to include: (a) protecting trademarks in relation to services; and (b) protecting trademarks in situations where their use would imply a connection between “goods or services and the owner of the registered [well-known] trademark” and might jeopardize the owner’s interests.

The Trade Marks Act, 1999 (henceforth, “the Act”) contains the legal requirements that specify and regulate well-known trademarks in the Indian context. A well-known trademark with regard to products and services is defined under Section 2(zg) of the Act as,  “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 addition, the Act’s Section 11 lays forth the requirements that the Registrar must meet in order to determine whether or not a trademark qualifies as a well-known trademark. While Sections 11(6) through (8) outline the factors that must be taken into account when evaluating whether a trademark is well-known or not, Section 11(9) lists the factors that should not be taken into account in the same determination. As per Section 11(6), the Registrar must consider pertinent information, such as the following, in order to determine whether a trademark is well-known:

  • The degree to which the trademark is known or recognized by the relevant segment of the public, including awareness raised by the brand’s promotion in India.
  • The length of time, scope, and region in which the trademark is used.
  • the length, scope, and geographic reach of any trademark campaign.
  • Insofar as they reflect the use or recognition of the trademark, the term and geographic scope of any trademark registration or application made according to this Act.
  • The history of successfully enforcing trademark rights, and in particular, the extent to which the trademark has led to any court or Registrar recognizing it as a well-known trademark.

Furthermore, in accordance with Section 11(7), the Registrar must consider the following information about a trademark when assessing whether it is known or recognized in a “relevant section of the public” as defined by Section 11(6)(i).

  • the total number of customers, real or projected, for the products or services.
  • The quantity of individuals engaged in the distribution of the products or services;
  • The commercial sectors in charge of handling the products or services.

Lastly, under Section 11(8), a trademark shall be deemed well-known for registration purposes if it has been previously judged to be so, either by a Court or a Registrar, in at least one pertinent segment of the public. However, the Registrar is exempt from the following requirements under Section 11(9) when determining whether a trademark is well-known:

  • the trademark’s application in India.
  • the trademark’s Indian registration.
  • the submission of the trademark registration application to India.
  • The trademark is widely recognized, registered, or the subject of a registration application that has been submitted in any jurisdiction outside of India.
  • India’s general public is aware of the trademark.

As of right now, 117 well-known trademarks have been registered in India, including Kit Kat, Whirlpool, and Cartier. This begs the question: Is it necessary for companies aiming to sell to the Indian market to register their brand as a well-known brand? In order to respond to the question, one must gain a comprehensive grasp of the advantages that well-known trademarks enjoy under the Act.

First, a relative ground for trademark refusal in relation to well-known trademarks is incorporated under Section 11(2). This provision states that a trademark that is: (a) identical or similar to an earlier trademark; and (b) intended for goods or services that are different from those for which the earlier trademark was registered, will not be registered if the earlier trademark has established a well-known trademark status in India and if using the later trademark without a valid reason would damage the earlier well-known trademark’s distinctive character or reputation.

Second, under Section 11(10), the Registrar is required to protect well-known trademarks from trademarks that are either identical or similar, and must consider the applicant’s or the opponent’s mala fide intent affecting the trademark rights, while evaluating an application for registration of a trademark and any opposition thereto.

Therefore, it is recommended that companies aiming to sell to India register their trademark as a well-known brand due to the high degree of protection afforded to well-known trademarks under Sections 11(2) and 11(10).

THE PROCEDURE FOR SEEKING A WELL-KNOWN TRADEMARK STATUS IN INDIA:

Prior to the implementation of Trademark Rules, 2017 (henceforth, “the Rules”), the determination of famous marks was mostly made by official court rulings. Nevertheless, following the change of the Rules, trademark owners may now, in accordance with Rule 124, ask the Registrar to ascertain whether or not their trademark is well-known by completing form TM-M. General instructions for submitting the application are as follows:

  • The application needs to be submitted on TM-M along with the Rs. 1,00,000/-in fees listed in the First Schedule.
  • Application materials can only be submitted through the official website (ipindia.nic.in).
  • The following documents must be presented with the application:
  • A case statement outlining the applicant’s trademark rights and bolstering their assertion of trademark fame. Details of the successful enforcement of the rights linked to trademarks should be included in the statement of case.
  • Proof bolstering the applicant’s rights and assertions.
  • Information about the effective enforcement of trademark-related rights, particularly to the degree that the Registrar of Trademarks or an Indian court have recognized the trademark as well-known.
  • A copy of the ruling from any Indian court or trademark registrar that deemed the trademark to be well-known.
  • The submitted documents must be A4 in size and in PDF format with a resolution of 200 x 100 dpi. Furthermore, the file size should be within the limit of 10 MB.

After the filing of the application, the following steps take place:

  • The proposed trademark’s details may be published by the office in the list of well-known trademarks.
  • Write a letter to the Registrar of Trademarks expressing your objections if you are against the proposed trademark being included to the list of well-known trademarks. If they have any supporting documentation, they can also send it.
  • To get the applicant’s feedback, a copy of the objection may be forwarded to them.
  • The objecting party and the applicant are notified by the office of their decision.
  • The applicant will be notified of the office’s decision regarding the proposed trademark’s inclusion in the list of well-known trademarks.
  • The proposed trademark will be listed in the Trade Marks Journal and added to the official website’s list of well-known trademarks if it is found to be well-known.
  • The Registrar has the authority to withdraw a mark from the list even after registration if it turns out that it was inadvertently or mistakenly deemed to be a well-known mark.

CONCLUSION

Particularly in the context of business, the theory of well-known trademarks—which has its origins in the Paris Convention and the TRIPs—is crucial. This is due to the fact that, although both trademarks and well-known trademarks are covered by the Act, trademark protection is not as strong legally as that of well-known trademark protection. In other words, whilst trademark protection can only be used in cases where the goods and/or services are identical, well-known trademark protection can be used in cases where the goods and/or services are not. Thus, it is highly advised that companies register their brand as a recognized trademark in India.