WELL-KNOWN TRADEMARK
Article 6bis The Paris Convention provides for protection of well-known mark by mandating the member countries 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 mark in that country as being already the mark of a person entitled to the benefits of the convention.
Neither the Paris Convention nor TRIPS agreement contains any definition of well-known mark, which is defined, for the first time, under Section 2 (1) (zg) of Indian Trade Marks Act 1999. Section 2 (1) (zg) defines:
Well-known trademark 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 sue 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.
Section 11 (6) to (11) deals with the matters relating to Well-known trademark. Subsection (6) lays down the list of factors to be taken into account by the Registrar while determining Well-known trademark. It is mandatory for the registrar to look into these aspects, which includes:
(i) Knowledge or recognition of that mark in the relevant section of public including knowledge in India
(ii) Duration, extent and geographical area of use of that mark
(iii) Duration, extent and geographical area of any promotion of the mark, including advertising or publicity and presentation, at fair or exhibition.
(iv) Duration and geographical area of any registration of or any publication for registration of that mark, to the extent they reflect the use or recognition of the mark.
(v) Record of successful enforcement and the extent to which the mark has been recognized as a Well-known trademark by any court or Registrar.
It must be mentioned here that these factors are only indicative and illustrative and by no means exhaustive. Registrar is not precluded from taking into consideration other factor, if found relevant. Also it is not necessary that all the criteria mentioned in the subsection (6) must be complied with. However, it is mandatory for the Registrar to take into consideration all these factors and cannot ignore any.
The protection afforded to a well-known trademark is on territorial basis. So the person seeking protection and enforcement of well-known trademark has to adduce evidence regarding duration, extent and geographical area of any use of the well-known trademark. The kinds of evidence may include consumer surveys and opinion polls, promotion of the mark through advertising in both print and electronic media etc.
However subsection (9) of section 11 forbids the Registrar to ask for the following as condition precedent to determine a trademark as well-known trademark. Particularly that the mark has been used or registered or filed for registration in India or outside India or that the trademark is well-known to the public at large in India are specifically excluded from consideration.
Subsection (7) of section 11 indicates the factors to be taken into account by the Registrar while determining whether a trademark in known or recognized ‘in relevant section of the public’. The inclusion of this phrase indicates that a mark to become a well-known trademark requires the knowledge on the part of public of relevant section and not the general public at large. The factors to be taken into account are as under:
(i) Number of actual or potential consumers of the goods or services.
(ii) Number of persons involved with the channels of distribution.
(iii) Business circles dealing with the goods or services to which that trademark apply.
The number of actual or potential users may vary depending upon the nature of goods or services. What the Registrar is supposed to do is not to count the numbers of person physically but to take into account the concerned section of users of those goods or services. As far as the distribution channels are concerned there has been sea change in the tradition mode of distribution and supply. The recent growth of super malls has changed the mode of distribution that must not be lost sight of. The third factor ‘business circles’ may include importers, wholesalers, franchisees and other dealers interested in dealing with the goods or services to which the mark applies.
Sub-section (8) of section 11 says that the determination of trademark as well-known trademark by any court or judicial authority amongst at least one relevant section of the public in India
Subsection (10) of section 11 casts an obligation on Registrar to protect well-known trademark while considering the application for registration of any mark and its opposition thereto. The protection to well known trademarks is afforded against the identical or similar trademarks[1], which may come up for registration to the Registrar. The underlying principle for according protection to well-known cases is to prevent traders taking free ride. They may tend to take advantage of the good will of the well-known trademark without doing efforts. Thus the Registrar is obliged to take into consideration ‘bad faith’[2] while balancing the interests of the parties (both applicant and opponent) involved in the enforcement of the well-known trademark.
The term ‘bad faith’ is also read through implication under section 18(1) of the Act, which provides that any person claiming to be the proprietor of a trademark used or proposed to be used by him shall apply for the registration of his trademark in a prescribed form. Thus there is an implication that he intends to use the mark in the manner applied for and which is nothing but normal and fair use. If the applicant’s use or propose use of the mark in not normal and fair that would bring upon him the charge that the mark proposed has been applied for in ‘bad faith’
Act does not define the expression ‘bad faith’ and is left to the Registrar to decide in each case based upon the facts and circumstances. ‘Bad faith’ as interpreted by the courts in India
Subsection (11) of section 11 forms the exception to the subsection (6) to 10 in the sense that it protects the prior use or prior registration in good faith before the commencement of the act, of an identical or similar trademark as against well-known trademark. To get the benefit of this provision, one must show that the prior use or registration was in good faith. Once this is proved, the right to use the mark cannot be taken away on the ground that the mark is identical or similar to a well-known trademark.
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