It recall the name of ‘Rolex’, and the

It goes without saying that an average person comes across a number of such names (or trademarks) in the ordinary business of life, without even realizing or thinking about it. Usually, when we think of ‘butter’, the image of an adorable girl holding a buttered toast flashes in our mind (commonly known as the ‘Amul girl’). Similarly, when someone asks us for an example of a luxury timepiece, we happen to recall the name of ‘Rolex’, and the characteristics that define the brand and its products. For a sizeable population out there, toothpaste, a commodity which we use every day, means ‘Colgate’. There are numerous such examples.

What are the reasons that only a chosen few are able to achieve this level of admiration?  Why do some people tend to remain loyal to a particular set of brands for fulfilling their needs or desires? It could be attributed to factors like commitment to quality, trend, legacy, marketing, innovation etc. Most corporations can be seen putting jaw-dropping amounts of time, capital and resources in such factors every year to maintain a level of reputation and demand for their goods and services.Let’s consider the example of a very ‘well known’ company called ‘Apple Inc.’. When the electronic giant came up with the concept of a touch screen handset, the ‘iPhone’, almost everyone thought it would fail, and they had their own reasons to believe so. As of today, the same product from Apple continues to be one of the most loved products in the history of mankind. It can be rightfully said that Apple acquired some sort of a cult status among people, and continues to remain one of the most powerful tech companies, generating unbelievable amounts of profits as well as goodwill.

Best services for writing your paper according to Trustpilot

Premium Partner
From $18.00 per page
4,8 / 5
4,80
Writers Experience
4,80
Delivery
4,90
Support
4,70
Price
Recommended Service
From $13.90 per page
4,6 / 5
4,70
Writers Experience
4,70
Delivery
4,60
Support
4,60
Price
From $20.00 per page
4,5 / 5
4,80
Writers Experience
4,50
Delivery
4,40
Support
4,10
Price
* All Partners were chosen among 50+ writing services by our Customer Satisfaction Team

In fact, there are many instances of litigation which prove that the corporation is highly overprotective of its technology, design or marks. So much so that it is said that its legendary co-founder, Steve Jobs, got the layout of the staircases, seen at some of the flagship Apple stores, patented.Now, what happens if someone, who is not even remotely related to the Apple Inc.

, decides to manufacture and sell ballpoint pens with the name of the famous brand on the barrel of its pens, and subsequently ends up earning a significant amount of undeserved profits? Here, the concept of ‘protection of one’s Intellectual Property Rights (IPRs)’ arises.   INTELLECTUAL PROPERTY RIGHTS (IPRs)Of course! Sharing, in many cases, is caring! But, there are many fields where the creator may not be pleased at the fact that his/her creation, on which he/she put so much of effort on, is being ‘shared’ or rather being exploited against his/her will…. That original creation is his/her Intellectual Property.

It could include one’s original music composition (such as lyrics for a song), literary composition (manuscript for a novel), scientific invention (perhaps, cure for cancer) etc.According to the World Intellectual Property Organization (WIPO), Intellectual Property refers to ‘creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce’1.IPRs are, in fact, like any other property laws which enable the creators or rightful owners to protect such creations of minds. The subject matter of IPRs includes copyrights, trademarks, industrial designs, patents, geographical indications, plant varieties, traditional knowledge, biological diversity etc.The establishment of WTO and India also being signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), m new legislations were passed for the protection of intellectual property rights to meet the obligations internationally.

These include the Designs Act, 2000; the Trade Mark Act, 1999; the Copyright (Amendment) Act, 2012; and the recent amendments made to the Patents Act, 1970 in 2005. Apart from this, plant varieties and geographical indications were also enacted in new legislations. These are called Geographical Indications of Goods (Registration and Protection) Act, 1999, and Protection of Plant Varieties and Farmers’ Rights Act, 2001 respectively.But, wait. Provision of IPRs doesn’t mean that ownership on an IP is evergreen. There are prescribed validity periods for each kind of works. Also, in case of technology, which the government of a particular region believes is necessary for the development of the local population (for example: generic drugs), ‘compulsory licenses’ can be awarded.

For example:  India granted its first ever compulsory license in the year 2012, a move which was well received in general. The license was granted to the Indian generic drugs manufacturer, Natco Pharma Ltd. for a cancer drug patented by Bayer, a German pharmaceutical giant.Nevertheless, IPRs are necessary. It might give someone (a potential ‘creator’) a purpose in life.

In a way, it is helping us to run the world. Even if we consider that a person creates or invents something with the sole motive of earning monetary benefits, if his creation/invention proves out to benefit the society at large, the motive can be excused (not that having monetary ambitions is bad). But, this creator/inventor might end up losing his/her morale or the drive, if another person starts exploiting that creation/invention against the will of the original creator/inventor. TRADEMARKSA trademark can be defined as a distinctive sign, design, expression, colour, smell, taste or even a set of letters/alphabets, which can be used to identify certain goods and services rendered by a particular brand or corporation, and differentiate them from goods and services, of similar or different nature, rendered by anyone else.

This enables consumers identify, purchase and enjoy products and services based on their specific characteristics and quality, as promised by the said trademark.For example, a product from the French luxury brand, Louis Vuitton, can be recognized by presence of certain design elements like a checked pattern in shades of brown or grey, usually known as the ‘Damier’ pattern2. In fact, the company is notorious of being overprotective of this very pattern. Another example could be that of the peculiar font used in the logo of ‘Coca-Cola’3.The Trademarks Act of 1999 deals with the concerns regarding trademarks in India. These concerns may include registration, protection, provisions of relief in case of infringement etc. As India happens to be a signatory of the Paris convention and the Trade-Related Aspects of Intellectual Rights (TRIPS) agreement, many of the provisions of the Trademarks Act, 1999, are in direct accordance to the principles laid down by the World Intellectual Property Rights (WIPO) and the World Trade Organization (WTO).

There are different types of trademarks based on their characteristics and features, as far as Indian jurisdiction is concerned, like -·         Product marks (to identify certain goods provided by a certain brand. For example: the ‘Maggi’ brand of instant noodles)·         Service marks (to identify services rendered by an enterprise. For example: ‘Ola’ brand providing cab services on demand)·         Collective marks (to identify an organization, institute/s or any association that is related to several members. For example: the logo of ‘CA’ used to classify a certain section of people associated with the profession)·         Certification marks (to show the standard of quality. For example: the ISI mark, Woolmark, Hallmark for jewellery etc.)·         Shape marks (a particular shape identifying products from a particular mark. For example: the unique shape of a Coca-cola bottle)·         Pattern marks·         Sound marksThere are certain conditions which need to be fulfilled in order to get a mark registered successfully. These conditions vary from place to place.

It must be distinctive, so that consumers can distinguish it from trademarks identifying other products, as well as identify a particular product with it. It must neither mislead nor deceive customers nor violate public order or morality.Considering the case of Apple again, the logo of the tech giant i.

e. a half eaten apple, apparently has no relation to the products which the company deals in, making it quite unique, and  is least likely to create any confusion in the minds of the consumers as to the products offered and services rendered by the company. On the other hand, if a person starts selling apples (the fruit) under the mark of ‘Apple’, it will most likely be rejected as it doesn’t fulfil the condition of distinguishing its products from others. WELL KNOWN TRADEMARKSThe Trademarks Act, 1999, gives a proper definition for ‘well known’ trademarks. According the provisions of the Act, ‘well known’ trademarks refers to 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 services4.In simple words, a ‘well known trademark’ is a mark which has gained popularity and goodwill among a substantial segment of a population, which uses the products or renders the services rendered by the trademark. Needless to say, in today’s competitive world, the tag of ‘well known trademark’ is aspired by most trademarks owners but, only a chosen few are able to acquire it. In order to be classified as a ‘well known trademark’, a mark has to fulfil certain necessary conditions, as listed in the Trademarks Act.

The main conditions include a greater degree and extent of territorial reputation as well as trans-border reputation (thanks to globalization) and the fact that the trademark enjoys substantial goodwill in the region (in a country or worldwide). For example: Bajaj, Mercedes Benz, Cartier, Infosys, Honda, Intel etc. Many of these trademarks embody a reputation of pre-eminent excellence and quality.It should be noted that the Registrar or any court of law can declare a trademark to be ‘well known’, regardless of the fact that this mark in concern has been introduced a few decades ago or just a few hours ago (again, provided that it fulfils the necessary conditions).

For example: the Indian start-up ‘Paytm’ became a huge success within a short duration.In the recent case of ITC Ltd. v. Britannia Industries5, the fact that mark has been in the market for several years was not taken into consideration.

The court stated that a mark can become an overnight success and the deciding factor should rather be ‘distinctiveness’, rather than an older presence.However, in the case of Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks6, it was held by the Intellectual Property Appellate Board (IPAB) that 1 year was not sufficient to acquire distinctiveness and, thus, the application for the declaration of the trademark as a well known trademark was not entertained.Before the enactment of the Act, the ‘well known trademarks’ were protected under the common law principles of passing off7. At present, there are 81 well known trademarks in the list maintained by the Trademark Registry in India8. These marks enjoy extraordinary protection against all kinds of unlawful exploitation of the said marks in comparison to other trademarks.

The accordance of these extraordinary rights, in a way, is rightfully justified too, considering that there are many enterprises are ready to reap on the benefits (profits) by unlawfully and shamelessly exploiting such powerful marks.The process of registering a mark as a ‘well known’ trademark used to be more cumbersome before the introduction of the trademark rules of 2017. The same shall be discussed later in detail. DOCTRINE OF DILUTIONA significant number of people these days buy commodities not on the basis of the quality or usefulness but, seem to be more influenced by the fact that such products happen to come from a particular company or mark. This is possibly the best example of power of branding and marketing.

In this context, the concept of dilution is pertinent to be mentioned. In simple words, the usage of a trademark owners’ mark as your own to produce and sell products either of inferior quality or for some other goods/services which are different in nature from that of the goods/services provided by the actual trademark owner is ‘dilution’. Trademark dilution can be of 2 types, namely:·         Blurring·         TarnishingBlurring refers to the exploitation of a mark’s selling power by using it unlawfully upon goods/services dissimilar in nature. Tarnishing refers to the unlawful usage of the original trademark owner’s rights by putting the mark upon goods of inferior quality.

Although the Trademarks Act, 1999, does not formally embark upon this concept, there are a number of judgements and precedents which discuss the significance of dilution in cases of trademarks infringements. FILING OF A MARK AS A ‘WELL KNOWN’ TRADEMARKSAs already stated, before the Indian Trademarks Act, 1999, came into effect, causes related to infringement of such rights used to be dealt in accordance to the common principles of passing off.There were significant changes in the whole process by which a trademark owner can get his mark registered as a well known trademark after the recently notified Trade Mark Rules, 2017 (especially, Rule 124). Prior to this, a court (or a quasi judicial authority, like in case of ‘Honda’) could only decide whether or not a mark is ‘well known’ during opposition, rectification or infringement proceedings.9 It implies that unless and until a trademark owner’s ownership of the mark was disputed by someone else or unless, a dispute involving the ownership of the trademark was brought in front of the court of law, the trademark owner couldn’t get his mark registered as a ‘well known’ trademark. A mere claim that a mark is well-known by the trademark owner wasn’t considered to be sufficientHowever, after Rule 124 came into effect, the process became a lot easier.

It’s more or less a one-step process where all a trademark owner needs to do is file a request in form, along with a list of documents in support of the claim as well as a prescribed fee of INR 1,00,000. The rule, however, does impose a duty to ‘invite opposition from general public’ but, it’s quite different from opposition, rectification or proceedings.The applicant shall provide the following documents in order to complete the process:·         Statement of case and evidence stating that the trademark is well-known mark;·         Details of successful enforcement of rights (if any);·         Copy of any judgment of any Court in India, where the trademark has been held to be well-known10.The law clearly states that if a trademark has been declared as a well known trademark in at least one relevant section of the public in India by any Court or Registrar, the trademark is to be considered as a well-known trademark.In the case of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan11, the defendant was accused by the plaintiff, again based abroad, of unlawfully using its trademark ‘Benz’ for selling undergarments, particularly under wears. The court restrained the defendant from using the mark.

It was noted that ‘Mercedes Benz’, as a brand, was known to any person claiming to know about cars (a ‘segment of population’) as a brand manufacturing and selling cars of finest quality, and that there could be no confusion with regards to the stated fact. This case can be considered as that where there was ‘blurring’ (a type of dilution) of the mark owned by the rightful owner by unlawfully exploiting the mark for selling undergarments (goods dissimilar in nature).Also, in case of Honeywell International v. Pravin Thorat & Ors.12, the Court took the fact into consideration, while determining whether the trademark was well-known or not, that the trademark had already been declared well-known in 3 other cases.   BENEFITS OF REGISTERING A TRADEMARK AS A ‘WELL KNOWN TRADEMARK’In comparison to ordinary trademarks, well known trademarks enjoy extraordinary protection against dilution or infringement.

Once a trademark is declared ‘well known’ by the Registrar or any court of law, the Trademark Registry is bound by law not to register any similar or deceptively similar trademark that is identical or similar to the ‘well-known’ trademark across all classes of goods and services13. This implies that even if a person uses the mark of ‘Google’ on a set of clothes intended to be sold, he is liable for dilution/infringement of the rights to use the mark ‘Google’ enjoyed by the trademark owner. Such cases of exploitation, however, are increasing day by day as a result of diminishing boundaries and universal access to the internet.The owner of a well known registered trademark is not restricted by the 5 year time limit for bringing cancellation action against similar/identical trademark/s registered in bad intention, while such time limit applies to ordinary trademarks.In case of Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Ors14.

, the judgement was delivered in favour of the plaintiff in the by the single trial judge, and the defendant was restrained from making use of certain trademarks owned by the plaintiff although the suit was filed after 8 years since the defendant got his trademark registered.One of the significant benefits of getting a mark registered as a well known trademark is that the court of law or the Registrar can rely upon evidences that prove that a mark enjoys substantial repute throughout the world by means of marketing, advertising or other facts like excellence in quality. It is also pertinent to be mentioned that the rights of a well known trademark owner remains protected even if the goods and services identified by the mark are not available in a region (provided that the mark enjoys sufficient goodwill in that geographical are). Also, it’s not necessary for the owner of a well known trademark to actually carry out a business in the concerned geographical area.In the notable case of that of N. R. Dongre v.

Whirlpool Corporation15. The plaintiff in this case happens to be an American manufacturer of electronic appliances. It was found by the plaintiff that the defendant had been using the plaintiff’s trademark to sell washing machines and other kinds of goods. The court, on the basis of trans-border reputation, granted a temporary injunction in favour of the plaintiffs based abroad. The plaintiff, at the time of the suit enjoyed worldwide reputation and also supplied appliances to be used in embassies. In case of Apple Computer Inc. v. Apple Leasing & Industries16, it was held that it is not necessary for the owner of a well known trade mark to carry out business in a particular geographical region (in this case, India)in order to enjoy rights against unlawful exploitation its mark.

In this case as well, the court relied on the trans-border reputation acquired by the mark.In Rolex SA v. Alex Jewellery Pvt. Ltd.17, the court of law took into account the extensive marketing/advertising done by the plaintiff in the country for decades as well as the fact that a substantial segment of the population was aware of the reputation of the brand (which happens to be one of the key factors in deciding whether a trademark can be considered a ‘well known mark’ or not). Similarly, in the case of Microsoft Corporation & Anr. v.

Kurapati Venkata Jagdeesh Babu, the fact that the plaintiff had done extensive marketing of its mark was used to declare that it was a well known trademark. In addition to an injunction in favour of the plaintiff, exemplary damages were also awarded.The stamp of well known trademark ensures that no one is able to exploit the rights enjoyed by owner of such a mark even if the nature of the goods or services provided by the other person is not even remotely similar to that provided that the registered trademark.The judiciary, in many cases, awards punitive damages to the owner of the well known trademark, which can be exemplary in nature.

Finally, it goes without saying that once a mark is declared ‘well known’, there are good chances that the trademark owner earns exponential level profits and goodwill. CONCLUSIONAfter the Department of Industrial Policy and Promotion (DIPP) introduced the latest Trademark Rules of 2017, it has become easier for trademark owners to get their marks registered as ‘well known trademarks’. Although it implies that the Registrar is being accorded with unlimited power as to the whole process, it can be rightfully said that the step will prove to be beneficial for trademark owners against unlawful exploitation.

As already stated, at present, the list maintained by the Trademark Registry consists of 81 trademarks (a miniscule figure considering the size of Indian economy). But, after the inception of the 2017 Rules, this list is most likely to include a lot of newcomers from local as well as international spheres. 1 WIPO; http://www.wipo.int/about-ip/en/ This article shall deal with the concept of ‘well known2 https://eu.louisvuitton.com/eng-e1/articles/a-damier-signature3 http://www.

coca-colaindia.com/stories/the-logo-story4 Section 2(1)(zg), Trademarks Act, 1999.5 CS (COMM) 1128/20166 2007 (34) PTC 352 IPAB7 Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another.8 https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx9 https://spicyip.com/2017/04/the-well-known-trademark-under-the-new-trade-mark-rules-2017-is-the-new-procedure-constitutional.html10 http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf11 AIR 1994 Del 23912 CS(OS) 3684/201413 http://www.mondaq.com/article.asp?article_id=622526&signup=true14 CS (OS) 2490/200915 (1996) 5 SCC 71416 1992 (1) ALR 9317 2014(60)PTC 131