The less-known benefits of well-known trademarks

What are Well-Known Trademarks?

“Well-known Trademarks” – are trademarks so well-recognized by the general populace that they are easily associable with the proprietor using them. Any trademark dubbed as ‘Well-Known’ tends to become generic to the goods/services being provided through it.

A well-reputed trademark generally inspires trust and faith towards the brand it represents, and an assurance towards the quality of goods/services bringing in customer loyalty and enhanced brand presence in the market. 

Since the Indian Trade Marks Act, of 1999 (hereinafter referred to as the ‘Act), came into force, a ‘Well-Known Mark’ has been defined under Section 2(1)(zg). The definition reads as below:

“‘well-known trade mark’, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or 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.”

However, prior to statutory provisions for the protection of Well-Known Trademarks coming into force, any marks with significant reputation were protected through remedies available under the common law.

How to Make Your Mark Well-Known?

To be recorded as a Well-Known Trademark under the Indian Trade Marks Act, of 1999, the conditions have been laid down under Section 11 of the Act. While it is generally accepted that once a trademark is so widely recognized among a significant portion of the public at large, the mark has to be examined and satisfy the conditions laid out under Section 11(6) of the Act. These conditions have been summarised below.

  • The familiarity of the trademark among relevant sections of society
  • How long, how widely, and where the trademark has been used.
  • How long, how widely, and where the trademark has been promoted, including advertising, presentations at events, and exhibitions.
  • How long and where the trademark has been registered or applied for registration under this Act, indicating its use and recognition.
  • The history of successfully protecting trademark rights, or if the trademark has been acknowledged as a well-known trademark by a court or Registrar.

On the other hand, for it to be declared as Well-Known, a trademark does not require:

  • Evidence of prior use in India,
  • Application for registration, or prior registration of the mark in India,
  • That the trademark satisfies any of the conditions above, in any other jurisdiction other than India, or
  • That the mark is well-known to the public at large in India.

These conditions make it clear that any trademark does not need prior registration, or any mandatory prior use only within the territory of India. Any trademark that may have acquired such reputation through extensive use outside the borders of India and has not applied for prior registrations before the Indian Registry, may apply for protection as a well-known trademark in India.  

Judicial Protection of Well-Known Trademarks

Several case laws in the past have protected trademarks and provided remedies against passing off, or through injunctions on infringing parties. Cases, such as Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], or the case of Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors. [2009 (41) PTC 284 (Del.)], are prime examples of how Courts have acknowledged the existence of reputation of the concerned marks transcending the boundaries of geographical location and classification of goods and services. While a normal trademark would only be limited to a confined geographical location in its reputation – well-known marks are, however, known across the nation (if not on a global scale), and are not limited by the class of goods/services being provided under it. 

Before such statutory protection under the Trade Marks Act, of 1999 was conferred, the Courts stepped in to protect against any infringement of Well-Known Trademarks, by assessing the repute associated with the mark. There have been several cases, including the ones above, where the Courts have declared any trademark as a Well-Known Trademark, despite it not being registered as such – and such a trend has continued to date.

Several such proprietors of well-known marks have gained immense benefits in cases where infringing marks have tried to ride on the coattails of their reputation but have been denied in turn by the Indian Courts. One recent example would be the Hermès Case, which involved their uniquely stylized and well-recognized logo for the letter ‘H’. The Delhi High Court, in deciding the case, applied the ‘Five Factor Test’ to determine when any trademark qualifies to be categorised as a well-known trademark. The Five Factor Test includes the conditions laid down under Section 11(6) of the Trade Marks Act, as mentioned above. Based on these factors, the Delhi High Court decided that since the mark of Hermes satisfies all the above requirements, it can be categorized as a ‘well-known mark’ under Section 2(1)(zg)  of the Trade Marks Act, 1999. The Court also permanently restrained the defendant from using their infringing mark, as well as taking down all listings doing so from their website.

The logos of Domino's Pizza and Dominick Pizza compared.

Disputes such as between Domino’s’ and Dominick’s marks, Subway v. Suberb, and many others, where third parties tried to encroach on the reputation of well-reputed marks – show that recognition as a well-known mark tends to better secure the trademark that they’ve made significant investments on. Further protection through applying to be included as a well-known trademark adds another layer of protection against infringement by third parties.

Particularly of note is the judgment by the Bombay High Court, in the case of RPG Enterprises v. Riju Ghoshal & Anr. [Notice of Motion No. 1306 of 2019 and Commercial IP Suit No. 769 of 2019], where the Court went on to opine that any proprietor may claim infringement of their mark if they hold a reputation for their mark in the country, even if the mark in question has not been registered as a well-known mark.

Why Should I Register as a Well-Known Trademark?

One might wonder why one needs to register my Trademark when it is indeed so well known, has a wide reaching reputation and has been in use for a long time (prior use) within India or across the Globe.

While a Well-Known Trademark can be protected based on its wide-reaching reputation and prior use, the benefits of registering a mark as one is undeniable. A registered Well-Known Trademark within India forms a part of the list of Well-Known Marks in the Trademarks Registry entailing the following benefits:

  • no longer needs to establish its status to dispute the registration of a third party’s deceptively similar mark.
  • imposes a duty on the Registrar of Trademarks to refuse to entertain any trademark applications for marks similar to a Well-Known Trademark.
  • prioritize the interests of the Well-Known Trademark situations arise when an identical or deceptively similar mark is being sought for protection.
  • the trademarks registry is not allowed to have any other applicant than the original proprietor of the well-known trademark, attempt to register a deceptively similar mark – across any class.
  • prevents unauthorised use by unrelated parties which may dilute the reputation of the mark itself.
  • consolidates the hold the proprietor has in the market and cuts down any imitations from tarnishing the reputation of the trademark.

India is a market where brands are prominently expanding their influence – and several companies, domestic and international have had their well-known trademarks registered. Having such comprehensive protection of your brand, as well as such strict regulation of protection in any other class goes on to show how valuable can a declared well-known trademark be for any brand, in any market. Similar examples show that well-known trademarks, if they are so recognized and protected as such, tend to provide the proprietors with a wider and significantly secure umbrella of protection for their brand.