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Well Known Marks - The “Determining” Factor

Published on Tue, Jan 05,2016 | 16:49, Updated at Wed, Jan 06 at 15:46Source : 

By: Deepak Vaid, Senior Associate – IP, Surana & Surana International Attorneys

Much like Japan & Germany, it is fascinating to see that the Indian Intellectual Property Office now maintains a separate register of well-known trade marks in its website. With this, the concept of well-known marks has been gradually picking up in the sub-continent with the popular dairy brand Amul being recently entered in the register. The register presently contains list of 68 trade marks with details on the basis of which respective trade mark is recorded as well-known mark (few of which are based on foreign judgements). (The register can be accessed from here).

Before scrutinizing the records in the register, let us first understand the significance of a ‘well known mark’.  A well known mark as defined under Section 2(zg) of Trade Marks Act, 1999 (“Act”), in brief, states that it is a mark which has become popular to a substantial segment of public.  Factors determining a “well-known” trade mark are detailed under sections 11(6) and 11(9) of the Act. These special provisions are adopted from Article 6bis of Paris Convention and Article 16.2 and 16.3 of TRIPS Agreement, which enumerate the factors/ conditions by which Registrar can determine whether a particular mark is well known.

Section 11(6) lays down the following conditions:

1. The knowledge or recognition of the trade mark in relevant section of public including knowledge in India obtained as a result of promotion of trade mark;
2. The duration, extent and geographical area of any use of the trade mark;
3. The duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
4. The duration and geographical area of any registration of or any application for registration of the trade mark to the extent they reflect the use or recognition of the trade mark;
5. The record of successful enforcement of rights in the trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

Section 11(9) states that the Registrar shall not require as a condition for determining that a trade mark is well known any of the following factors:

1. That the mark has been used in India
2. That the trade mark has been registered.
3. That the application for registration of the trade mark has been filed in India
4. That the trade mark is well known in or has been registered in or in respect of which an application for registration has been filed in any jurisdiction other than India
5. That the trade mark is well known to the public at large in India

These provisions in sum and substance infer that for a mark to be declared as well known, the brand has to be popular and recognised. ‘Use’ is not an important factor, ‘knowledge’ or ‘recognition’ of the brand is.

While Section 11(6) and 11(9) refer to the powers of Registrar to determine a mark as well known, Section 11(8) states that even if any court “determines” the same, the Registrar shall consider the mark as well-known for registration under the Act (though the Act & the corresponding Rules nowhere state any process of such registration of well known mark).  Thus the power to “determine” a mark as well known is also extended to any court (P.S: the Act does not state whether the court is an Indian court or it can be a foreign court as well).

Now let us examine few marks to know the basis of recording them as well-known:

Red Bull (Determining authority: WIPO; citation 2003(27) PTC 164)

The case is a domain dispute decision by the administrative panel of WIPO (foreign judgement) with contesting parties being Red Bull GmbH, an Austrian company and Bayer Shipping & Trading Ltd. of UAE (WIPO Case D2003-0271).   The case neither deals with complainant’s presence/ business in India nor does it say anything regarding availability of Red Bull in India. The parties are not from India, the dispute has no connection to India, the deciding authority is neither an Indian court nor the Registrar, and not a single word in the decision stating that the brand is popular and/or well recognised in the territory of India. Under such circumstances, we wonder, how the mark is “determined” as 'well known' in India.  

Considering that Red Bull is recorded in the register of well-known mark, if section 11(6) and 11(9), read with 11(8), is applied to this case, it implies that judgment of any foreign court, which has “determined” a mark as well known, can be used for the purpose of registration of well-mark in India. The assumption that foreign judgments are accepted is therefore validated with the Red Bull case.   However in stark contrast, the Assistant Registrar of Trade Marks, in reply to a query under RTI, has held that foreign judgments are not relevant for registration of well-mark in India (The RTI application and the complete reply can be accessed from here). These two instances seem absolutely contradictory and make us wonder if there is a proper “determining” factor at all.

'Revlon',' Charlie' and ‘Intimate’ (Determining authority: Delhi High Court; Citation:1997 PTC 394)

The citation is a case of Revlon Inc v. Sarita Manufacturing Co. in which Delhi High Court passed an ad-interim restraint order in 1997 (under the old Trade Marks Act) against the defendants from infringing the mentioned three marks of Revlon.  Even in this case, in its 15 page judgement, the Court nowhere “determines” the marks as well-known. In fact there is not a single mention of the term “well-known”. The only place where a reference could be assumed is at Para 12 which states that “the trade mark Revlon, Intimate and Charlie have a transborder reputation”. This paragraph however is merely an extract from the plaint. It is not an observation/ conclusion of the court.  This makes us wonder again - how did the Registrar apply Sec 11(8) in this case as the Court never “determined” the marks as 'well known'.

Now even here - considering that all the three marks are recorded in the register of well-known marks, if provisions of section 11(6) and 11(9) are applied, we can infer that any successful infringement/ passing off action can thus form the basis of the mark being recorded in the register as well-known mark, irrespective of whether the court “determines” the mark as well known.

Though the draft Trade Marks (Amendment) Rules, 2015 ("Draft Rules"), recently issued by the DIPP, Ministry of Commerce and Industry, spells out the procedure for registration of a well known mark. However the draft fails to address any fixed guidelines to determine how the mark is accepted as a well known mark.  The Registrar's discretion is made paramount in such case, which may cause grounds for further litigation as well as ambiguities. The question still remains unanswered as to what goes into determining a mark as well known in India.

With this small analysis, we feel, it would be imperative if the well known mark register is revisited to check if the marks entered are based on the “determining” factors.  The well-known mark register is most elite register of brands in India and it ought to be retained in its purest form. No doubt the intention behind creating and maintaining a well known mark register is bonafide, however Trade Marks Registry should be meticulous in examining and recording marks in the register.  It would also help if proper guidelines are issued regarding the process of registration of well known marks, with the “determining” factors clearly spelt out.

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