The well known trademark has been defined in the trademark act, 1999. It refers to a mark which has become so unique segment of the public used to identified goods or services. A well-known trade mark must have substantial reputation all over India. In other words we can say that it is the difference of degree and extent of territorial reputation. L’Oreal, Adidas, Intel, and Apple are trademarks that definitely fit this definition. Any trade mark with the status of a “well-known” substantially improves the extent of protection available to it, as it provides the owner of the brand, the exclusive right to the trade mark against all unlawful users thereof, regardless of the differences in the field of business, goods or services.
A well-known trade mark is a popular mark that can be logo or a symbol that represents a brand and also earned goodwill and reputation. A trademark becomes a well known mark depending on:
“Well-known trade mark”, 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 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 statutory definition simply states that if:
A trademark is recognized by a substantial segment of a population that uses the goods and services represented by the trademark; and the use of the trademark by anybody in relation to other goods or services is perceived by the public as belonging to the proprietor of the mark. The trademark qualifies as well known trademarks.
Importance of well known trademark
The importance of a well-known trademark lies in the fact that they bring huge commercial value for the trademark owners. Registration and unauthorized use of such a trademark is infringement of the trademark. Unauthorized use of such mark creates confusion about the quality of product within the consumers and hence damages the reputation of the brand. Illegitimate imitation of trademarks is a punishable offence.
Identification of well known trademark
As per the Statute, the Registrar of Trade Marks shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:-
(i) That the trade mark has been used in India,
(ii) That the trade mark has been registered.
(iii) That the application for registration of the trade mark has been filed in India.
(iv) That the trade mark –
(a) Is well known in; or
(b) Has been registered in; or
(c) In respect of which an application for registration has been filed in, any jurisdiction other than India;
(v) That the trade mark is well known to the public at large in India.
Protection of well known trademarks:
The protection of trademark is done by the international trademark registration system.
Protection from registration of the trademark by a third party.
Protection from misuse of the trademark.
Goods and services are classified by the 9th nice classification of goods and services and there are 45 classes defined for goods and services. First 34 classes are defined for goods and rest 11th classes are defined for services.
Case Study for Well Known Trademark Infringement
In the matter of Kamal trading Co. vs. Gillette UK Limited (1998 IPLR 135) injunction was sought against the defendants who were using the mark 7’O Clock on their toothbrushes. The Bombay High Court, which held that the plaintiff had acquired an extensive reputation all over the world including India by using the mark 7’O Clock on razors, shaving creams, as such it was a well known mark. The use of an identical mark by the defendant would lead to the customer being deceived. As such, the defendant was prohibited from using the mark.