Introduction
The genesis of the trademarks can be traced back to the inception of trade practices wherein the traditional objective of the trademarks is to indicate the commercial origin of the goods and services while ensuring a certain level of quality. Additionally, a trademark serves to confer exclusive rights to proprietors, protecting their goods and services. In contrast, the origin of the well-known marks paves the way from the Paris Convention to the TRIPS agreement, and finally, it gets the WIPO recommendation, and it can be outlined as a widely recognized mark on the part of the common public due to its association with the exceptional popularity, goodwill, and prestige of the owner, company, or brand, and therefore, the Trademark Act, 1999, accords an extraordinary and high degree of protection to such marks, inclusive of protection across all classes of goods or services and across all geographical locations.
Some examples with regard to well-known marks would include brand names like Tata, Coca-Cola, Apple, Nike, McDonald's, Google, Microsoft, and Amazon. These trademarks are not only recognized globally but are also associated with the products and services that these companies offer. They are protected by both national and international trademark laws and are highly valuable assets for their owners.
Provisions under the trademark Act, 1999
The relevant statutory provision for "well-known mark" is given under section 2(1)(zg) of the Act as "well-known trademark, in relation to any goods or services, means a mark that has become so to the substantial segment of the public that 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."
The Trademark Act, 1999, bestows protection to the well-known marks majorly at two levels, including protection against the registration of the similar marks and action against any misuse of such marks. Several other provisions exist in regard to well-known marks in the Act, namely Section 11(6) of the Act, which specifically lays down various factors to be considered by the Registrar to determine well-known marks, which are as follows--
- The extent of knowledge of the mark to, and its recognition by, the relevant public;
- The duration of the use of the mark;
- The extent of the products and services in relation to which the mark is being used;
- The method, frequency, extent, and duration of advertising and promotion of the mark;
- The geographical extent of the trading area in which the mark is used;
- The state of registration of the mark;
- The volume of business of the goods or services sold under that mark;
- The nature and extent of the use of the same or a similar mark;
- Actual or potential number of persons consuming goods or availing services being sold under that brand.
Section 11(7) of the Act enunciates the conditions taken into account by the registrar while determining the relevant section of the public, which involves the number of actual potential consumers, the business circle dealing with the goods and services, and the number of persons involved in the channels of distribution of goods and services. And further highlighting the provision of protection, well-known marks are protected against the identical or similar trademarks by the Registrar under section 11(10) of the Act.
Relevant rule for well-known marks under the Trademark Rules, 2017
Rule 124 of the Trademark Rule, 2017, allows any trademark owner to file a request in Form TM-M requesting the Registrar to declare a trademark 'well-known' along with an official fee of INR 1,00,000. Further, stages of evidence submission, examination by the registrar, and publication in the trademark journal in case of third-party opposition proceed. And thereupon, within four months the mark is granted the status of a well-known mark.
Court's Stance on Well-Known Trademark
The Plaintiff sought an injunction against the Defendants for the unauthorized use of its renowned logo (the roundel logo) and the word 'Benz.' The Court, acknowledging the Plaintiff's mark as well-known due to its trans-border reputation and significant goodwill, granted the injunction, thereby prohibiting the Defendants from continuing to use the disputed marks in the sale of their apparel.
Conclusion
To sum up and draw the inference, well-known trademarks relish the extraordinary protection legally due to their reputation internationally and in the domestic sphere, strengthening the position of the owner in the business as well. Consumer attention is the major aspiration for the national and international brands, and the status of a well-known mark can absolutely lead them the way. Well-known marks not only assure the quality standard and reliability of the products to the customers but also foster brand loyalty and therefore bolster the relationship between consumers and brands.
Spreading a light on the impact of well-known marks, it has strengthened the position of proprietors due to their reputation in the market and inculcated difficulties for the infringer to put forth his argument stating he was unaware of the mark. Hence, well-known marks have a significant impact in the market on the part of consumers as well as the brands.
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