Well-Known Trademarks In India: Discussion Through The Case Laws

Protection of trademarks in India is governed under the Trade Marks Act, 1999. A trademark plays a vital role in branding, identification, and market distinction. Some brand names or trade names become so deeply rooted in the minds of the public that consumers immediately associate a product or service with that particular name. In legal terms, such brand names are classified as “well-known trademarks” under Section 2(1)(zg) of the Trade Marks Act, 1999. These marks hold immense commercial value and require legal protection to prevent trademark infringement, misuse, and unfair commercial advantage by third parties. For businesses, understanding the importance of trademark registration, trademark protection, and even conducting a regular trademark search is crucial in safeguarding brand identity in India.

Registration of a well-known trademark in India provides protection against registration of any other mark identical to the concerned well-known trademark. It also ensures that others do not misuse the particular well-known trademark to cause undue loss to the mark owner. By opting for trademark registration with the Registrar of Trademarks, brand owners get stronger legal remedies in case of trademark infringement or unauthorized use. Many businesses today seek advice on how to trademark a name or logo in India to strengthen their intellectual property rights.

Determining Factors

Rule 124 of the Trade Marks Rules, 2017 provides for the procedure for registration of well-known trademarks in India. Section 11(6) of the Trade Marks Act, 1999 lays down certain factors which shall be considered by the Registrar while considering the classification and registration of a particular mark as “well-known.” These factors include:

• Recognition of the trademark amongst a particular relevant section of society
• Duration and extent of the usage and promotion of the mark
• Geographical area in which the trademark is used or promoted
• Duration or geographical area of any registration or application of registration of the mark under the Trade Marks Act, 1999
• Extent of recognition of the trademark by any Court or Registrar

Further, for determining the recognition of the mark amongst a relevant section of the public, Section 11(7) of the Trade Marks Act, 1999 provides that the Registrar shall consider: (1) number of actual or potential consumers of the product or service, (2) number of persons involved in the channels of distribution of the product or service, and (3) business circles dealing with the good or service. Conducting a trademark search is often the first step for businesses to determine conflicts before filing for trademark registration.

Further, Section 11(8) of the Trade Marks Act, 1999 clearly states that any trademark which is considered to be well-known amongst even one section of the public in India by any Court or Registrar shall be granted the status of being well-known and be considered for registration under the Act. This demonstrates the significance of trademark law in India in ensuring wide-ranging trademark protection.

Landmark Case In India

Protection of well-known trademarks in India was included in the Trade Marks Act, 1999 which came into force much later. So how did the Indian judiciary deal with the issue of protecting the well-known marks in India before such provision was made enforceable? The courts used the principles of injunction and passing off to protect the owners of well-known trademarks in India before the provision for the protection of well-known marks was introduced through the Trade Marks Act, 1999. These judicial decisions still remain important references for trademark law in India.

In this regard, it is important to discuss the famous case of Daimler Benz v. Hybo Hindustan (1993), wherein the plaintiff was a famous German car company and operated through its subsidiary in India. The defendant was using its trademark “Benz” and a similar logo on undergarments. The Court held that the plaintiff's mark is globally well-known and has gained reputation over years. It granted an injunction in favour of the plaintiffs, which prevented the defendants from using the alleged marks on their products. This case became a milestone in trademark protection against misuse and trademark infringement.

Another case of Rolex SA v. Alex Jewellery Pvt. Ltd. (2009) established the classification of well-known trademarks even if a particular section of the public recognises the mark as a well-known mark and is capable of identifying its product or service. In this case, the plaintiff was a luxury brand selling premium watches and the defendant was a dealer in artificial jewellery bearing the trade name “Rolex.” The Court held that the defendant cannot use the said name in its products as it already creates a certain perception in the minds of a section of people in the society. There might be a possibility that people associate the defendant's products with those of the plaintiff. Considering the provisions of Section 11(6) of the Trade Marks Act, 1999, it was held that the said trademark is a “well-known” mark. This strengthened the framework for trademark registration and enforcement in India.

Indian judiciary applied the principles for protecting well-known trademarks even before this term was coined in the trademark law in India. Therefore, the concept of well-known trademarks has been ever-evolving, with courts ensuring to take a balanced approach of protecting rights and providing commercial justice. Today, the framework under the Trade Marks Act, 1999 emphasizes the importance of trademark registration, trademark search, and proactive measures against trademark infringement. Businesses must remain vigilant and seek professional advice on how to trademark a name or logo, ensuring stronger trademark protection and long-term brand equity.

Author: Adv. Varun Singh, Founder, Foresight Law Offices India. Views are personal.