Well Known Trademarks
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“Goodwill is no easy symbol of good wishes, it is an immeasurable and tremendous energy, the atomic energy of the spirit”
- Eleanor B. Stock
“Insist on yourself; never imitate. Your own gift you can offer with the cumulative force of a whole life’s cultivation, but of the adopted talent of another, you have only an extemporaneous, half possession”
- Ralph Waldo Emerson
In this present era of consumerism, market is full of competition and traders are now aware of the need of consumers. Consumers are also aware of market and only use the goods and services which they believe to be original and trustworthy. Many companies have gained a tremendous goodwill in the market by their performance and quality of goods and services. People buy some goods or uses some services only because they are being provided by their trustworthy brands even they are of not useful for them. This is because that particular brand has created an impact in the consumers’ mind that they are now in a bond of trust and quality.
If we go to market, we wiil observe that we are purchasing things by their packaging, colour, structure, designs etc (for example we purchase Dairy Milk chocolate by its PURPLE colour or burgers of McDonald by seeing its YELLOW M sign) which are being advertised and we have made an blueprint of all those things in our mind that this particular design, colour, packaging etc belongs to this particular brand. What are all these things? These are called “TRADEMARKS”.
When a company uses any symbol, logo, words, numbers, signs, designs or any combination of all these to sell any product and use these marks on packaging that is to say uses these marks during the course of trade and these marks are indication and capable of being distinguished from other goods and services of that kind. Then these marks are known as TRADEMARKS. A trademark is an intellectual property of a company and is regulated by THE TRADEMARKS ACT, 1999.
As discussed above that these trademarks are used to identify products and distinguish them from another brands. Sometimes these trademarks become so friendly to general public and people just buy the products only because that product has that trademark. That is to say, people start recognizing products of companies through trademarks in large scale
( for example COCACOLA,BENZ,SAMSUNG,APPLE, GOOGLE etc are widely known all over the world). These trademarks become well known to general public, hence these kinds of trademarks become WELL KNOWN TRADEMARKS because that trade mark has earned a goodwill in market which helps the company to sell products in market easily and with trust.
Now as we know that trademarks are very important property of any company and is related to their goodwill, if someone uses that trademark then surely he can profit himself by using it, because public now recognizes trademarks and trust the brand accordingly. But use of trademark by any unauthorized person is prohibited by law. Registration of trademark is not mandatory in India, according to section 18 “ if someone has a desire to register it can apply for its registration”. If a trademark is registered for some specific good then it gives the proprietor of that trademark to use that trademark exclusively for that particular goods and services but not for other goods and services.
Section 2 (1) (zg) of THE TRADEMARKS ACT, 1999 defines well known trademarks and says that if any trademark is widely known to public and enjoys high goodwill then that trademarks is declared as WELL KNOWN trademarks. Well known trademarks enjoys higher and significant protection under law. The first time, when well known trademarks were discussed, was the PARIS CONVENTION in 1883. After 1883 the member state were given the rights to make and regulate the provisions regarding well known trademarks as in 1883 no procedure was laid down. It was 1999 when Indian law recognized the well known trademarks in a statute and before that it was governed by common law principles.
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How a trademark is declared as a Well known trademark?
- In India before 2017, trademarks were only declared as well known trademarks by judicial proceedings which means that no one was allowed to apply for registration for well known trade mark
- From 2017, by virtue of TRADEMARKS RULES 2017 a proprietor of a trademark can apply to register his trademark as well known trade mark.
So at present there are 2 ways by which a trademark can become a well known trademark that are either by registration or by judicial decisions.
What are advantages of a well known trademark?
- If a trademark is a well known trademark then this trademark cannot be used for goods and services other than for which the trademark is registered. It means that it prevents registration of similar or identical or deceptive similar trademark in respect of all classes of goods and services. Section 11(2) of the Trademarks Act 1999 states that well known trademarks gives exclusive right to the holder to have it no matter for what goods and services the registration is done which means if a trademark similar to or identical with the well known trade mark and even if it is to be used for the goods and services other than registered earlier, such use is prohibited.
- Under section 11(10) (i) it is the duty of registrar to protect a well known trademark whiloe considering any application for registration of trademark.
- The owner of a well known trademark can prevent the use of its trademark in any other company’s name.
- Owner of well known trademark can request removal of infringing mark.
- A owner of well known trademark may get both punitive damages and compensatory damages as held by court in 2005 in case of Time Incorporated v. Lokesh Shrivastava.
Procedure of filing for well known trademark.
As per the section 124 Trademarks Rule 2017 the following is the procedure for applying-
- It is mandatory to apply through online e-services of trademarks on official website i.e., www.ipindia.nic.in .
- Application in form TM-M and payment of fees for e-filing amounting 100000 as mentioned in schedule 1.
- Application to be made to registrar for determination.
- A statement of case with all the evidences and documents ( on which the applicant relies for his claim) should be attached with the request.
- Documents needed-as per notice issued by government dated 22/05/2017.
- Statement of case describing the applicant’s rights in the trademark and describing the applicants claim that the trademark is a well known trademark.
- Evidence as to use of trademark.
- Any application for registration made or obtained.
- Annual sales turnover of business.
- Evidence as to actual or potential number of customers under the said trademark.
- Evidence of advertising.
- Evidence as to recognition of trademark in relevant section of public in India and abroad.
- Details of successful enforcement of rights relating to said trademark when said trademark has been recognized as well known trademark by court or registrar.
- Copy of judgment of any court in India or Registrar of Trademarks, wherein the trademark has been recognized as well known.
Note: documents must be in PDF format with resolution of 200 * 100 dpi on A4 size paper and total file should not exceed the limit of 10 MB.
Factors which are taken into consideration by registrar-
In 1999 WIPO adopted a joint resolution concerning provisions on the protection of well known trademarks from infringement and misuse and enlisted various factors to determine well known trademarks. India is a member of world trade organization and included these factors in section 11(6).those factors are as follows-
- Knowledge or recognition of the trade mark in public(relevant section).
- The duration, extent and geographical area of any use of that trademark.
- Duration, extent and geographical area where Advertisement or promotion made regarding trademark has been made.
- The duration of any registration or application of registration of the trademark to the exztent they reflect the use or recognition of trademark.
- The record of enforcement of the rights to the extent the trademark is well known trademark.
Factors not required for well known trademark registration-
Section 11(9) provides such conditions which not taken into consideration by registrar while graantin a well known trademark, which are as follows-
- The trademark has been used in India.
- That the trademark has been registered.
- That the application of the registration of the trade mark has been filed in India.
- The trademark is a well known trademark in any jurisdiction other than India.
- The trademark has been registered in any jurisdiction other than India.
- The trademark in respect of which an application for registration has been filed in any jurisdiction other than India.
- The trademark is well known to the public at large in India.
Some cases on well known trademarks
- Tata Sons ltd. V. Manoj Dodia and others ( 28 March 2011)
In this case the defendants used a trademark named “A-ONE TATA” to sell their products, plaintiff that is tata sons ltd. Sued them and while considering the matter court observerd that the defendants tried to take an unfair advantage of the goodwill of the plaintiff company and recognized the trademark of tata sons ltd. as “well known trademark” and prohibited the use of the trademark by unauthorized persons as it would lead to lowering the reputation of tata sons ltd.
- Rolex Sa v. Alex Jwellery pvt ltd. and Others ( 9 April 2009)
In this case the defendants used trademark “Rolex” for selling jwellery, while Rolex is a company who trades in watches and is well known to a particular segment of public world wide. Court while considering the matter declared Rolex a well known trademark and protected it and thus the act of defendants were found to be guilty as they tried to take an unfair advantage of the goodwill of Rolex.
- Daimler Benz Aktiegesellschaft v. Hybo Hindustan( 1994 )
This is the most famous case regarding Well known trademarks and was decided on the basis of common law principle regarding well known trademarks. In this case the defendants ( Hybo Hindustan) used the trade mark of Benz to sell undergarments. Court while deciding the case observed that trademark Benz is well known and it is hard to believe that people having knowledge of care or any other people are not aware of this particular trademark, court declared that this trademark of Tristar logo of Benz is a well known trademark and this cannont be use by unauthorized persons to trade even in other kind of goods and services.
At last I feel appropriate to quote some word sais by “William Feather” : “ none of us can buy goodwill; we must earn it.
List of well known trademarks in India
At present as per official government list there are 97 Well known trademarks in India and there are many applications pending for the approval to be considered as well known trademark.
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1 |
7 O'CLOCK for shaving razors |
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2 |
AIWA |
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3 |
BAJAJ |
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4 |
BATA & BATA FOAM for footwear |
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5 |
BENZ |
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6 |
BISLERI |
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7 |
CARREFOUR |
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8 |
CARTIER for wide variety of goods including jewellery,watches, perfumes etc. |
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9 |
CATERPILLAR |
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10 |
CHARLIE |
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11 |
DR.REDDY In respect of pharmaceutical products. |
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12 |
DUNHILL |
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13 |
ENFIELD BULLET |
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14 |
EVIAN Mineral Water |
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15 |
FEDDERS For air conditioners |
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16 |
Whirlpool |
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17 |
GLAXO |
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18 |
HAYWARDS 5000 For alcoholic |
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19 |
HOLIDAY INN |
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20 |
HONDA |
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21 |
HONDA For motor cycles, motor cars etc. |
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22 |
HORLICKS For food products, malted biscuits, toffees.See also similar case |
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23 |
Hamdard |
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24 |
INTIMATE |
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25 |
Infosys |
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26 |
Intel |
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27 |
KANGARO |
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28 |
KIT KAT |
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29 |
LETTER*T IN A CIRCLE House mark |
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30 |
Logo *M' in the distinctive style and design of the famous golden arches |
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31 |
MAHINDRA; MAHINDRA & MAHINDRA; M & M |
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32 |
MARS for chocolates, confectionery etc. |
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33 |
NIRMA See also Sl.No.32 |
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34 |
NIRMA for washing & cleaning preparations |
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35 |
NIVEA |
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36 |
ODONIL & ODOMOS For mosquito repellants |
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37 |
OMEGA |
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38 |
PANADOL & PANADOL EXTRA |
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39 |
PEPSI |
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40 |
PHILIPS |
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41 |
PIZZA HUT Logo in respect business relating to restaurants |
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42 |
PLAYBOY for magazine and several other goods |
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43 |
RED BULL |
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44 |
REVLON |
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45 |
TACO BELL for Restaurant business |
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