The Ambient of Well-known Trademarks: The Law

INTRODUCTION

The designation 'well-known' in Trademark law denotes a significant level of public recognition, indicating that it is widely known across various geographical areas. It represents a particular class of trademarks that have become intrinsically linked with specific goods or services, effectively representing the brand identity by its name. To obtain recognition of a trademark as 'well-known,' individuals may submit an application to the Registrar using Form TM-M and pay the required fees. Under Rule 124 of the Trademarks Act, 2017, a trademark can be granted 'well-known' status through an application submitted to the Registrar upon request.

The Trade Marks Act, 1999 outlines the definition of a “well-known mark” under Section 2 (1)(zg) which is defined as 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.

ACQUIRING SECONDARY MEANING

The marks which acquire secondary meaning due to their extensive usage, huge advertisements, and sales can become well-known marks. If the industries are distinct, there's a chance that regular consumers may associate a prominent, well-known brand with a new context. Unlike other/ general trademarks, which are limited to specific regions, well-known trademarks enjoy widespread recognition not only in the country of registration but also across various parts of the globe.

For instance- If we use “Apple” in terms of fruit, it is a generic term on the other hand if we use “Apple” in terms of Electronic devices or for electronic industry. It will specifically indicate the Apple products in the electronic industry. For its extensive use, recognition, and tradename in the particular industry/ segment, the registry recognised the Apple trademark as a well-known trademark in the electronic industry.

It was held in Daimler Benz Aktiegesellschaft and Ors. Vs. Hybo Hindustan that there are names and marks which have become household words. "Benz" as the name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. The defendant cannot dilute, that by user of the name "Benz" with respect to a product like under-wears.

To attain recognition as a well-known trademark, widespread acknowledgement among a broad audience is important. The trademark registrar evaluates different factors which are associated with that particular trademark. The status of a well-known trademark is influenced by advertisers, manufacturers, and other stakeholders.

WELL KNOWN TRADEMARKS

Both the Trademark Registry and the High Court have the authority to recognize a trademark as well-known. Numerous factors are taken into consideration when making this determination, including the trademark's market niche for particular goods, its reputation, and its geographic scope.

A number of trademarks that are widely recognized as well-known are Puma, Puma Leaping cat, New Balance, Asics, Casio, Samsonite, American Tourister etc. There are certain factors which need to be satisfied to certify the mark as well- known Trademark. It was held in Hermes International and Ors. Vs. Crimzon Fashion Accessories Private Limited which has set out the data available with respect to each of the five factors enumerated in Clauses (i) to (v) of Section 11(6) of the Trade Mark as being relevant for deciding whether a mark is eligible for being declared a well-known trade mark.

(i) Factor-1: The knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark.

(ii) Factor 2: The duration, extent and geographical area of any use of that trade mark.

(iii) Factor 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.

(iv) Factor 4: The duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark.

(v) Factor 5: The record of successful enforcement of the rights in that 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.

In New Balance Athletics Inc. Vs. New Balance Immigration Private Limited , it was cited that the mark "NEW BALANCE" is a unique combination of two distinctive words i.e. "New" and "Balance" which have no connection, allusion or description of the products of the services offered by the Plaintiff. The logo is also quite distinctive and has been repeatedly enforced by the Court orders against misuse. Accordingly, Marks “NB” and “NEW BALANCE” have been declared as well-known trademarks.

CONCLUSION

In this regard, I can conclude and contemplate that to attain well-known status for a trademark cannot be an overnight process. It requires significant effort from the company. Also, from the Hermes Judgment, it can be concluded that five factors need to be fulfilled to make the mark “Well Known”. This status can be attained through various means, such as consistent product use under the specific trademark by effective advertising, establishing secondary meaning, gaining recognition from consumers or the public, and achieving substantial sales volume for the trademarked goods. These factors are crucial considerations for companies aiming for well-known status. In the event of infringement on these well-known trademarks by individuals, the trademark owner can seek protection from the Trademark Registry.