The Indian scenario on famous marks
In its meeting in Helsinki in September 2013, the International Association for the Protection of Intellectual Property (AIPPI) will consider Working Question 234: “The relevant public for determining the degree of recognition of famous marks, well-known marks and marks with a reputation.” What AIPPI thinks today, the world thinks tomorrow. In India, the situation is complex.
The Indian Trademarks Act 1999 does not refer to famous marks or notorious marks. Section 2(1)(zg) defines “well-known trademarks”, which in relation to any goods or services, means a mark which has become well-known to a substantial segment of the consumer public.
The Paris Convention and the TRIPS Agreement do not define well-known marks. Article 6bis of the convention provides for protection of “well-known marks”. India, as a member of the convention, is bound to follow those provisions and those of the TRIPS Agreement.
Article 16 of the convention states: “Article 6bis of the convention shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark.
“Article 6bis of the convention shall apply, mutatis mutandis, to goods or services, which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”
“Well-known trademark” means a mark which is well-known to a substantial segment of the public who use the goods or services. The word “substantial” need not mean large numbers of people. It could mean large in amount, value or importance to be noticeable or to have an important effect; or of real worth and importance.
Section 11(a) refers to …“(b) its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.”
The expression “on the part of the public” is not clarified. “Earlier trademark” in the explanation means “a trademark which on the date of the application for registration of the trademark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trademark”.
Section 11(2) of the Indian Trademarks Act 1999 provides: “(2) A trademark which (a) is identical with or similar to an earlier trademark ; and (b) is to be registered, for goods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.”
"It will be a great perversion of the law relating to trademarks and designs, if a mark of the order of Mercedes-Benz is humbled by indiscriminate colourable imitation."
It does not envisage whether registration of an identical or similar mark will cause or is likely to cause confusion with, or deception to, an earlier trademark. The main consideration is whether the earlier trademark is “well-known” and whether use of a later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Section 11(8) says: “Where a trademark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.”
In the case of Canon Kabushiki Kaisha v Registrar, 2009 (39) PTC530, the Intellectual Property Appellate Board (IPAB) allowed an appeal against the Registrar’s order dismissing the opposition to an application for ‘Canon’ in Class 16 for geometrical boxes, mathematical instruments, drawing sets and stationery.
IPAB considered the similarity of the marks, and that the main part of the appellants’ trade name was ‘Canon’. The appellants’ trademark ‘Canon’ was registered in India in various classes. The IPAB held that ‘Canon’ is a well-known trademark.
There is no legal ruling as to what is “the relevant public” in determining the knowledge, recognition or fame of a mark. Registrars and the IPAB use the expressions “marks with a reputation”, “reputed trademarks”, “marks with a great reputation”, “famous mark”, and “well-known mark”.
Clarity in the use of such expressions is needed.
A registrar taking quasi-judicial notice of the reputation of the trademark ‘Anacin’ held: “I am a quasi judicial official of 55 years of age with a rural background, I am aware of Anacin from my childhood. I knew Anacin as a headache treatment. It was generally available in a small grocery/general store of the village. It was popular and known to the public in general including illiterates, women, and servants as a medicine for headache. ‘Anacin’ is declared a well-known trademark.”
In Disney Enterprises, Inc v Rajesh Bharti & Ors, 2013 (54) PTC372(Del.) the plaintiff sued the defendants to restrain a product bearing a word mark or character device similar to the plaintiff’s registered trademarks ‘Mickey Mouse’ and ‘Disney’, also alleging passing off. The plaintiff proved trademark registrations in India and 58 countries. The defendants had adopted the ‘Disney’ mark and characters for bicycles.
The court held that the plaintiff’s trademarks were well-known marks and entitled for protection in all classes of goods. Damages were awarded with an injunction.
Protection was given to the well-known mark ‘Mercedes-Benz’ on non-competing goods. The defendant sold underwear for men with the representation of a man with his legs separated and hands joined together above his shoulders, within a circle, to indicate a strong suggestion of a link to the three-pointed star of the Mercedes-Benz car.
The judge used caustic words: “I think it will be a great perversion of the law relating to trademarks and designs, if a mark of the order of Mercedes-Benz is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons who make undergarments like the defendant, or anyone else.
Such a mark is not up for grabs—not available to any person to apply upon any thing or goods. That name, which is well known in India and worldwide with respect to cars has as its symbol a three-pointed star.”
In India even if a mark is not registered criminal proceedings can be taken against those who use false trademarks/false trade descriptions. A person convicted for shoplifting four pairs of socks goes to jail for six months. However, in a matter where predators earn millions by wrongful imitations they go scot free!
WIPR is sad to report that Tehemtan N. Daruwalla passed away on August 13. Condolences should be directed to jgbdadvo@gmail.com.
