How to Recognize well known Trademarks in India

Well known marks play a crucial role within the global market because it is understood to the overall public and enjoys a reasonably high reputation within the market. The primary time documented trademarks was discussed within the Paris convention, 1883, wherein the said convention began certain guidelines for cover of documented trademark but they didn’t lay down any procedure intrinsically and hence left it to the signatory countries to form their own rules and regulations for registration of such marks. All the countries globally including India have accepted the importance of the documented trademark.

India has given documented Trademark exceptional rights over registration of identical or deceptively similar marks and also against their abuse. The law makers in India have made specific provisions for safeguarding the documented trademarks within the Trademark Act, 1999 and therefore the Trademark rules of 2017, as earlier the documented trademarks were protected under the common law from where the passing off was formulated. documented Trademark is defined under Trademark Act,1999 as-

“in reference to any goods or services, a mark which has become so to the substantial segment of the general public which uses such goods or receives such services that the utilization of such mark in reference to other goods or services would be likely to be taken as indicating a connection within the course of trade or rendering of services between those goods or services and an individual using the mark in reference to the first-mentioned goods or services.”

India has protected documented Trademarks since the very beginning i.e. before the introduction of Trademark Act, 1999. India was following common law to guard the documented Trademarks. Before introduction of the Act, there have been many supreme court judgements which protected documented Trademarks in India.

Procedure of Registration

Before the introduction of Trademark Rules, 2017, the Registry has made an inventory of documented Trademarks and uploaded on the web site of Trademark Registry, but after the introduction of latest rules the registration has got to be done by filing an application online to register mark also known mark. These new rules helps in determining and declaration of a documented mark-

  1. To determine whether the mark is documented or not, the registry will consider following things-
  1. That the overall public has knowledge about the said mark and are ready to recognize the alleged documented mark and recognition obtained by way of promotion.
  2. The duration, extent and geographic area of any use or promotion of that trademark.
  3. The record of successful enforcements of the rights therein trademark, especially to extent to which the trademark has been recognized as a documented trademark by any court or registrar thereunder record.
  4. The number of actual or potential consumers of the products or services.
  5. The business circles handling the products and devices to which the trademark applies.
  6. Wherein a trademark has been determined to be known in a minimum of one relevant section of the general public in India by any court or registrar, the registrar shall consider the trademark as a documented trademark for registration under this act.

Section 11 of the Trademark Act, 1999 provides protection of documented trademark and protection for marks which are registered in straightness .

B. Filing a Mark as a documented Trademark in India

According to Rule 124 of the Trademark rules, 2017, a person can apply for its registration, but there are certain steps which must be followed for filing of a mark as a documented mark-

  1. Form TM-M form must be filed so as to urge a mark registered as a documented mark.
  2. The prescribed fee as per the primary schedule of the principles in form TM-M is Rs. 1,00,000/-.
  3. That the appliance are going to be filed online through the e-filing services of the Trademark through www.Ipindia.nic.in
  4. Furthermore there are certain documents that are required to be submitted along side the shape .
  5. Statement of case describing the applicant’s rights within the trademark and describing the applicant’s claim that the trademark may be a documented trademark.
  6. Evidence in support of the applicant’s rights and claim must be submitted.
  7. Details of successful enforcement of rights.
  8. Copy of judgement wherein the Trademark is defined as a documented mark.
  9. After the submission of documents, the office will consider on the idea of documents submitted.
  10. If accepted then it’ll be added within the list of a documented trademark.
  11. If not then objections are going to be raised to which applicant can file a counter statement within stipulated time.
  12. That after considering both the edges of the parties the ultimate decision are going to be given.
  13. If accepted within the list of documented trademark an equivalent shall be told to the applicant and therefore the same shall be told to the Trademark journal and the mark shall be included within the list of documented trademark, and can even be available within the website.

List of Well known Trademark in India

There is a list of 97 well known Trademarks have been updated by the registry. However there are numerous pending applications which are yet to be declared by the Registry. The list of the existing well known Trademarks in India is mentioned in the table below-

Serial No.TrademarkProprietorReportObservation
17 O’CLOCK for shaving razorsGillette U.K. Ltd., England1998 PTC 288 DBIt is recognized that trade mark 70’Clock is well known. As such the use of the mark in respect of tooth brush will lead to passing-off.
2AIWASony Corpn., JapanDecision dated 26-09-2007AIWA is a well-known trade mark in India in respect of electronic goods. Use of this mark without due cause for any other products would be likely to deceive or cause confusion, unfair advantage and be detrimental to the distinctive character and repute of mark.
3BAJAJBajaj Electrical LimitedAIR 1988 BOM-167The use of a family name Bajaj by defendants was held to be an act of passing-off. The goodwill and reputation of Plaintiff company was recognized.
4BATA & BATA FOAM for footwearBata India Ltd.AIR 1985 ALLAHABAD 242The plaintiff company Enjoy a reputation for its products.
5BENZDaimler Benz1994 PTC 287Reputation extends worldwide.
6BISLERIAcqua Minerals Ltd.,2001 PTC 619BISLERI is well-known in the Indian market and one of the first marks introduced for bottled mineral water. The defendant who was held to have adopted the domain name Bisleri with the intention to trade on the plaintiffs reputation and goodwill, was restrained.
7CARREFOURCarrefour Society Anonyme, organized under the laws of France2007 (35) PTC 225The trade mark /name used by the applicant for 47 years throughout the world has to be protected, in order to promote commercial morality and discourage unethical.trade practices. Plea of well-known trade mark is accepted.
8CARTIER for wide variety of goods including jewellery,watches, perfumes etc.Cartier International, B.V, Netherlands2003(26) PTC 160(Del)Trade Mark Cartier in respect of various consumer goods have acquired a reputation for quality not only in India, but throughout the world. Plaintiff company has acquired brand image and personality in respect of their products. Permanent injunction granted.
9CATERPILLARCaterpillar Inc., USA1998IPLR 326Name Caterpillar in respect of heavy vehicles and the name has earned reputation & goodwill world wide.
10CHARLIERevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
11DR.REDDY In respect of pharmaceutical products.Dr.Reddy Laboratories2004 (29) PTC 435Trade Mark PR.REDDY, in spite of not being registered, has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceuticals not only in India, but abroad also.
12DUNHILLAlfred Dunhill Limited, U.K.1999 PTC 294Plaintiff has prima-facie established a distinctive reputation, image and goodwill in the trade mark and trade name DUNHILL. Plaintiff has acquired global reputation.
13ENFIELD BULLETEnfield India Ltd.2006(32) PTC 397BULLET is a well known trade mark. It cannot be permitted to be copied even in respect of different goods. Appeals against Registrar’s decision allowed.
14EVIAN Mineral WaterSociety Anonyme Des Eavx Minerals ‘D’ Evian1993 PTC 103Evian acquired excellent reputation and goodwill world over. Said reputation and goodwill extended to India. Mark acquired high degree of distinctiveness. Para 3 & 4 exparte order.
15FEDDERS For air conditionersFedders North America2006(32) PTC 573Defendants cannot be permitted to cash in on the international reputation of the plaintiffs. Injunction granted.
16WhirlpoolWhirlpool Corporation,USA1996 PTC 476A product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge or the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed Injunction granted.
17GLAXOGlaxo India Ltd.2002 (25) PTC 105GLAXO is an invented word. By original adoption, registration, long and continuous user, plaintiff alone is entitled for the exclusive use of the trade mark GLAXO and no one else.
18HAYWARDS 5000 For alcoholicShaw Wallace & Co. Ltd.2003 (27) PTC 63The defendants used.numeral 5000 in respect o$3e*r to cash in on vide reputation and goodwill butf. ovet the years by the plaintiffs. Interim injunction confirmed.
19HOLIDAY INNHoliday Inn Inc.2002(25) PTC 308 (DB)Words HOLIDAY INN have been adopted by appellant to ride on global reputation of the respondent Commercial goodwill and global reputation should W be allowed to be exploited in a clandestine marine -. Appeals dismissed.
20HONDAHonda Motor Co. Ltd.2004(28) PTC 332Trade Mark HONDA is famous around the globe.
21HONDA For motor cycles, motor cars etc.Honda Motors Company Ltd.2003 (26) PTC1Plaintiffs business is of international character and reputation .Trade mark Honda has a global reputation.
22HORLICKS For food products, malted biscuits, toffees.See also similar caseHorlicks Limited.2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241Suits for injunction filed against various companies by the plaintiffs, injunction orders have beer passed and most of the suits have been decreed in”0VQur of the plaintiffs. (Under Section 11(6) record of the successful enforcement of the rights in that traifi nwks is a relevant consideration) Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
23HamdardHamdard National Foundation (Hamdard Davakhana)2008 (38) PTC 109The defendant took a calculated risk in using the HAMDARD word and eye mark; indeed its use of the eye mark points to an attempt to “free ride” on the plaintiffs reputation.
24INTIMATERevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
25InfosysInfosys Technologies Ltd.2007 (34) PTC 178The owners has established expenditure of 392 crores towards sales promotion marketing expenses and brand building during 2004-05 alone. It has established an enviable reputation and goodwill in the market nationally and international level.
26IntelIntel Corporation2007 (34) PTC 492Famous and well-known trademarks especially those that embody a reputation of pre-eminent excellence and quality, as plaintiffs Intel trademark, are required to be given a broad protection.
27KANGAROKangaroo Industries2004 (29) PTC 175Mark declared as well known mark.
28KIT KATSociete Des Produits Nestle,S.A.,1800 Vevey,Canton of Vaud,Switzerland.Judgement in TA/1/2007/TM/DEL/(C.M.(M)) No. 148 of 2002) dt. 11/12/2009KIT KAT is a Well-known having trans-border reputation.
29LETTER*T IN A CIRCLE House markTata Engineering & Locomotive Co. Ltd.2006 (32) PTC 296Respondents who have established their reputation and goodwill in automobiles and several other goods are entitled to have the trade mark safeguarded. BENZ case applied.
30Logo *M’ in the distinctive style and design of the famous golden archesMcDonald’s Corporation, U.S.A.1999 PTC 9The Logo ‘M’ is a well-known and famous logo and courts have recognized the existence of trans-border reputation.
31MAHINDRA; MAHINDRA & MAHINDRA; M & MMahindra & Mahindra Ltd.2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012Mark is in use for five decades. The name has acquired a distinctive secondary meaning in the business or trade circles
32MARS for chocolates, confectionery etc.Mars Incorporate,USA2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
33NIRMA See also Sl.No.32Shantaben 1 Karasanbhai Patel and Others2001 PTC 427NIRMA is an invented word. It has acquired great reputation. The owners have been spending huge amount on advertisement for their trade mark. Their sales in relation to various goods are mounting every year.
34NIRMA for washing & cleaning preparationsS.K.Patel2004(29) PTC 634The principle laid down by various courts was applied namely where a regd. Trade mark has got reputation & goodwill they cannot be permitted to be used by another person even in respect of different goods.
35NIVEABeiersdorf A.G.2009 (39)PTC 38Nivea is a recognized product of high quality and has international reputation and recognization. These are marks where the line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular are specific type of goods or services. .
36ODONIL & ODOMOS For mosquito repellantsBalsara Hygiene Products.2004(29) PTC 226Plaintiff has built up reputation in the mark, goodwill & huge sales turnover.
37OMEGAOmega S.A.,Bienne,Switzerland2003 27 PTC 327The Plaintiff company has been using the trade name OMEGA for more than 50 years and has enjoyed reputation for its products.
38PANADOL & PANADOL EXTRASmithKline Beecham Pic.2001 PTC 321Defendants deliberately used Plaintiffs well known mark.
39PEPSIPepsi Inc.2006(32) PTC 225Pepsi enjoys a huge reputation and goodwill not only in India but also internationally .
40PHILIPSPhilips NV NetherlandsAIR 1983 P&H418Is a household mark and has acquired enviable reputation in India and throughout the world.
41PIZZA HUT Logo in respect business relating to restaurantsPizza Hut International LLC, USA2003(26) PTC 208(Bom)Plaintiffs enjoy a worldwide reputation, including in India. It is settled law that if the marks/logos enjoy a trans border reputation, they are entitled to be protected against infringement and passing off in India.
42PLAYBOY for magazine and several other goodsPlayboy Enterprises Inc.,2001 PTC 328Plaintiff has demonstrated its strength due to the degree of distinctiveness, fame and reputation of the trade mark Playboy. The trade mark acquired world wide circulation and publication in as many as 16 foreign countries.
43RED BULLRed Bull GmbH2003(27) PTC 164Trade Mark RED BULL is one of the best known trade marks not only in Austria but all over the world. Registration of domain name by the respondents was held to be in bad faith.
44REVLONRevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
45TACO BELL for Restaurant businessTaco Bell Corporation,USA2000 PTC (20) 554Plaintiff operated over 6000 restaurant worldwide using name taco bell as logo. Mark registered in more than 70 countries including India in classes 29 & 30. Defendants intention was to trade upon the famous mark of the plaintiffs.’
46TATA SEE also TATA CASETata Chemicals Limited2003 (27) PTC 422 2004 (29) PTC 522 (Delhi) 2001(21) PTC 129 2009 (40) PTC 54The trade mark TATA is a household name in respect of various products all over India.TATA is a household word in India and solely and exclusively associated with the House of Tata.TATA is a well known mark.In the decision list of cases where enforcement of rights have succeeded is given.
47TELCOTata Engineering and Locomotive Co. Ltd.,2001 PTC 562TELCO mark has gained transborder reputation and goodwill. The mark is identified with the owners and their products throughout India as well as various countries in the world.
48TOSHIBAToshiba Corporation,Japan.2005 (30) PTC 188TOSHIBA held as a well known mark and registration cannot be rectified for non-use.
49USHA For sewing machines, electric fans etc.Not given2004(29) PTC 647The respondent had built up long reputation and goodwill in India as well as abroad. The same cannot be permitted to be benefited by the appellant in respect of different goods or by different architecture or design.
50VICKS VAPO RUBRichardson Vicks Inc.1990 PTC 16Prima facie the mark as well as bottles distinctive labels and metal containers have become well known and acquired a great reputation (para 32).
51VOLVO for automobilesAktiebolaget Volvo1998 PTC (18) 47Trans-border reputation is recognized by Indian courts and that actual sale in India is not necessary for a Plaintiff to establish its goodwill and reputation in India.
52KIRLOSKARKirloskar Proprietory LimitedAIR 1996 BOM-149The mark KIRLOSKAR used by the plaintiff had acquired a secondary meaning and had become a household word.
53WOOLWORTH In respect of clothing etcF.W.Woolwor th Company2004 (29) PTC 477Trans-border reputation enjoyed by the mark WOOLWORTH is not something to be not taken account of. The world wide reputation of the mark was recognized.
54YahooYahoo, Inc.1999 PTC 201The services of the Plaintiff under the Trade Mark/Domain name ‘Yahoo’ have been widely publicized and written about globally.
55Polo (label with device of polo player)POLO/LAUREN COMPANY IP (USA)Decision dated 19.12.2011 in CS(OS) 1763/2005Having regard to the evidence placed on record the plaintiff has established that the registered trademark of the plaintiff is a well-known mark as defined in Section 2 (z) (g) of the Trade Marks Act
56GE MonogramGeneral Electric Company (USA)Decision dated 21.12.2011 in CS(OS) 1284/2006It can hardly be disputed that GENERAL ELECTRIC as well as GE whether written in plain letters or in a stylized form such as monogram are well known marks of the plaintiff within the meaning of Section 2 (z) (g) of the Trade Marks Act
57KALPATARUKalpataru Properties Private Limited, Santacruz MumbaiSuit No 2976 of 2010 decided on 29th July 2011“The Plaintiffs have thus established that .’Kalpataru’ is a well known mark ” .”I have held above the plaintiff’s mark “KALPATARU” to be a well known mark”
58CastrolCastrol LimitedJudgement in Suit No. CS(OS) 1369/2006 Decision dated 18/08/2011High court observed CASTROL is a well known Trade Mark within the meaning of Sec. 2(1) (zg) read with Sec. 11(6) of TM Act 1999.
59LupinLupin LimitedJudgement in Suit (L) No. 3137/2011 Decision dated 05/12/2011The High Court observed Lupin, a Well Known Trade mark.
60CanonCanon Kabushiki Kaisha, JapanOrder in OA/43/2005The Appellate Board Concluded that CANON mark is a well known term under Sec. 11(10) of TM Act 1999.
61MicrosoftMicrosoft Corp.Judgement in Suit No. CS(OS) 2163/2010 order dated 03/02/2014Court has specifically determined that Microsoft is a well-known trademarks and it is known to the most of the people.
62NestleSociete des produits Nestle S.A.Judgement in Suit No. CS(OS) 551/2010 dated 08/03/2013Court has specifically determined that Nestle is a well-known trademarks
63BBCBritish Broadcasting CorporationCS (OS) 1171/2007Hon’ble Court has determined the mark as a well-known in Indian Territory in its observation
64DupontE. I. du Pont de Nemours and CompanyCS (OS) 2998/2012Hon’ble Court has determined the mark as a well-known in its observation
65CandidGlenmark Pharmaceuticals Ltd.Suit No. 182/2013Hon’ble Court has determined the mark as a well-known in its observation
66AMULKaira District Co-Operative Milk Producers Union Lld.OA/56/2011/TM/KOLThe IPAB Emphasised AMUL as a well-Known Trademark.
67RajnigandhaDharmpal Satyapal Ltd.CS (OS) 381/2012Hon’ble court observed that Plaintiff has established the mark as a well known trademark.
68Louis VuittonLouis Vuitton MalletierCS (OS) 270/2014 and CS (OS) 90/2006Hon’ble Court has determined the mark known in Indian Territory in its observation
69GOOGLEGoogle Inc.CS(OS) 317/2011 ; CS(OS) 2907/2011The Court has observed Google worldwide reputation and provided the relief on this basis only.
70HAVELLSHavells India LimitedCS(OS) 3770/2014The Court accepted Havells a well known TM
71BLOOMBERGBloomberg Finance, LPCS(OS) No. 2963/2012Interim Order was passed in favour and same was confined vide order dated 12/02/2014 in which HC Observed Bloomberg as well-known.
72JOHN DEEREM/s Deere & Co. Ltd.CS (OS) 3760/2014The Court observed John Deere a well known TM (para 13 of order dated 05/03/2015).
73RAYMONDM/s Raymond Ltd.OA/16-17/2010/TM/CHThe IPAB observed this mark as Well-known TM.
74FERRERO ROCHERM/s Ferrero SpaCS (OS) 404/2012The Court observed this mark as Well-known TM.
75FORDM/s Ford Motors Co.CS (OS) 1710/2015The Court observed this mark as Well-known TM.
76TOYOTAM/s Toyota Motors CorporationCS (OS) No. 62/2007The Court observed this mark as Well-known TM.
77TIMBERLANDM/s TBL Licensing LLC,CS (OS) No. 2158/2007The Court observed this mark as Well-known TM.
78SONYM/s Sony CorporationOA/49/2007/TM/KOLThe High Court and tribunal has observed this mark as Well-known TM.
79ULTRATECHM/s UltraTech Cement Limited,Suit No. of 2288/1986The Court observed this mark as Well-known TM.
80VOGUEM/s Advance Magazine Publishers INCSuit No. 3079/2003Suit No. 2860/2011
81VIRGINVirgin Enterprises LtdOrder No.73/2005 (IPAB)Suit No. 2860/2011
82SIEMENSMs. Siemens AktiengesellschaftCS (OS) No. 3785/2014The Hon’ble Court has determined the subject mark as a well-Known TM
83LAVASALavasa Corporation Ltd.Suit No. 562 of 2013The Hon’ble court in its order dated 19/07/2013 has observed that subject mark is a well-Known Trademark
84MOTHER DAIRYMother Dairy Fruit & Vegetable Pvt. Ltd.CS (OS) 2399/2010High Court of Delhi, observed “MOTHER DAIRY (Blue Logo)” is a well known TM
85MONGINIS for cakes, pastries and other bakery productsMonginis Foods Private Limited at B-60, Off Link Road, Andheri West, Mumbai 400053.N/AThe Registrar observed that the Mark is well-known in reference to cakes, pastries and other bakery products.
86MARUTI For Industrial Oil, Automobile, Business administration and retail outlet, Research & Development.Maruti Suzuki India Limited, At Plot No. 1, Nelson Mandela road, Vasant Kunj, New Delhi-110070N/AThe Registrar observed that the Mark is well-known in reference Automobile, Business administration and retail outlet, Research & Development
87GODREJGodrej & boyce MFG. Co. Ltd., at Firojshanagar, Vikhroli, Mumbai-400079N/AThe Registrar observed that the Mark is well-known trademark in view of its wide presence in the market
88BIOCON For Pharmaceutical preparation, Business administration & retail outlet and Research & Development.Biocon Limited 20th K.M. Hosur Road, Electronic City, Bangalore-560100N/AThe Registrar observed that the Mark is well-known in reference Pharmaceutical preparation, Business administration & retail outlet and Research & Development
89BrahMosBrahMos Aerospace Private Limited at 16 Cariappa Marg, Kirby Place Delhi Cantt. – 110010(CS (OS) No. 2655/2013Hon’ble Justice in the matter observed that “I have no hesitation to come to the conclusion that the trademark Brahmos is a well-Known trademark.”
90TCS For Software development and allied servicedTATA SONS LIMITED, Bombay House, 24 Homi Mody Street, Mumbai-400001N/AThe Registrar observed that the Mark is well-known in reference Software development and allied serviced.
91LuLu for Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion StoresLuLu International Shopping Mall Private Limited, 34-1000, NH: 47, Edapally, Kochi, Kerala – 682024N/AThe Registrar observed that the Mark is well-known in reference to Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores.
92INDIA GATE For Food grains and allied Products.KRBL Limited, 5190, Lahory Gate, Delhi. 110006N/AThe Registrar observed that the Mark is well-known in reference to Food grains and allied Products.
93ZEE With reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education etc.ZEE Entertainment Enterprises Limited, B-10, Essel House, Lawrence Industrial Area, New Delhi, 110035.N/AThe Registrar observed that the Mark is well-known with reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education, Processing of Precious Metals, Finance, Technology, Health care and Allied Services.
94GARNIER Relating to ‘toiletry and cosmetic products.L’OREAL S.A. At 14, Rue Royale Paris 75008 France.N/AThe Registrar observed that the Mark is well-known with reference to ‘toiletry and cosmetic products’.
957 ELEVEN Relating to ‘retail chain, allied products and services7-ELEVEN, INC. At 3200 Hackberry Road, Irving, Texas 75063, USAN/AThe Registrar observed that the Mark is well-known with reference to ‘retail chain, allied products and services’.
96ORAL-B Relating to oral care productsProcter & Gamble Business Services, At 1959 Upper Water Street, Suite 800, Halifax, Nova Scotia, B3J 2X2, Canada.N/AThe Registrar observed that the Mark is well-known with reference to oral care products.
97KESARI In respect of travel and tourism ServicesKesari Trust, Kesari Trust, At B/5, Silver Queen CHS, Soonawala Agiary Marg, Mahim, Mumbai-400 016, Maharashtra, IndiaN/AThe Registrar observed that the Mark is well-known with reference to travel and tourism Services.
Serial No.TrademarkProprietorReportObservation
17 O’CLOCK for shaving razorsGillette U.K. Ltd., England1998 PTC 288 DBIt is recognized that trade mark 70’Clock is well known. As such the use of the mark in respect of tooth brush will lead to passing-off.
2AIWASony Corpn., JapanDecision dated 26-09-2007AIWA is a well-known trade mark in India in respect of electronic goods. Use of this mark without due cause for any other products would be likely to deceive or cause confusion, unfair advantage and be detrimental to the distinctive character and repute of mark.
3BAJAJBajaj Electrical LimitedAIR 1988 BOM-167The use of a family name Bajaj by defendants was held to be an act of passing-off. The goodwill and reputation of Plaintiff company was recognized.
4BATA & BATA FOAM for footwearBata India Ltd.AIR 1985 ALLAHABAD 242The plaintiff company Enjoy a reputation for its products.
5BENZDaimler Benz1994 PTC 287Reputation extends worldwide.
6BISLERIAcqua Minerals Ltd.,2001 PTC 619BISLERI is well-known in the Indian market and one of the first marks introduced for bottled mineral water. The defendant who was held to have adopted the domain name Bisleri with the intention to trade on the plaintiffs reputation and goodwill, was restrained.
7CARREFOURCarrefour Society Anonyme, organized under the laws of France2007 (35) PTC 225The trade mark /name used by the applicant for 47 years throughout the world has to be protected, in order to promote commercial morality and discourage unethical.trade practices. Plea of well-known trade mark is accepted.
8CARTIER for wide variety of goods including jewellery,watches, perfumes etc.Cartier International, B.V, Netherlands2003(26) PTC 160(Del)Trade Mark Cartier in respect of various consumer goods have acquired a reputation for quality not only in India, but throughout the world. Plaintiff company has acquired brand image and personality in respect of their products. Permanent injunction granted.
9CATERPILLARCaterpillar Inc., USA1998IPLR 326Name Caterpillar in respect of heavy vehicles and the name has earned reputation & goodwill world wide.
10CHARLIERevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
11DR.REDDY In respect of pharmaceutical products.Dr.Reddy Laboratories2004 (29) PTC 435Trade Mark PR.REDDY, in spite of not being registered, has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceuticals not only in India, but abroad also.
12DUNHILLAlfred Dunhill Limited, U.K.1999 PTC 294Plaintiff has prima-facie established a distinctive reputation, image and goodwill in the trade mark and trade name DUNHILL. Plaintiff has acquired global reputation.
13ENFIELD BULLETEnfield India Ltd.2006(32) PTC 397BULLET is a well known trade mark. It cannot be permitted to be copied even in respect of different goods. Appeals against Registrar’s decision allowed.
14EVIAN Mineral WaterSociety Anonyme Des Eavx Minerals ‘D’ Evian1993 PTC 103Evian acquired excellent reputation and goodwill world over. Said reputation and goodwill extended to India. Mark acquired high degree of distinctiveness. Para 3 & 4 exparte order.
15FEDDERS For air conditionersFedders North America2006(32) PTC 573Defendants cannot be permitted to cash in on the international reputation of the plaintiffs. Injunction granted.
16WhirlpoolWhirlpool Corporation,USA1996 PTC 476A product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge or the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed Injunction granted.
17GLAXOGlaxo India Ltd.2002 (25) PTC 105GLAXO is an invented word. By original adoption, registration, long and continuous user, plaintiff alone is entitled for the exclusive use of the trade mark GLAXO and no one else.
18HAYWARDS 5000 For alcoholicShaw Wallace & Co. Ltd.2003 (27) PTC 63The defendants used.numeral 5000 in respect o$3e*r to cash in on vide reputation and goodwill butf. ovet the years by the plaintiffs. Interim injunction confirmed.
19HOLIDAY INNHoliday Inn Inc.2002(25) PTC 308 (DB)Words HOLIDAY INN have been adopted by appellant to ride on global reputation of the respondent Commercial goodwill and global reputation should W be allowed to be exploited in a clandestine marine -. Appeals dismissed.
20HONDAHonda Motor Co. Ltd.2004(28) PTC 332Trade Mark HONDA is famous around the globe.
21HONDA For motor cycles, motor cars etc.Honda Motors Company Ltd.2003 (26) PTC1Plaintiffs business is of international character and reputation .Trade mark Honda has a global reputation.
22HORLICKS For food products, malted biscuits, toffees.See also similar caseHorlicks Limited.2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241Suits for injunction filed against various companies by the plaintiffs, injunction orders have beer passed and most of the suits have been decreed in”0VQur of the plaintiffs. (Under Section 11(6) record of the successful enforcement of the rights in that traifi nwks is a relevant consideration) Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
23HamdardHamdard National Foundation (Hamdard Davakhana)2008 (38) PTC 109The defendant took a calculated risk in using the HAMDARD word and eye mark; indeed its use of the eye mark points to an attempt to “free ride” on the plaintiffs reputation.
24INTIMATERevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
25InfosysInfosys Technologies Ltd.2007 (34) PTC 178The owners has established expenditure of 392 crores towards sales promotion marketing expenses and brand building during 2004-05 alone. It has established an enviable reputation and goodwill in the market nationally and international level.
26IntelIntel Corporation2007 (34) PTC 492Famous and well-known trademarks especially those that embody a reputation of pre-eminent excellence and quality, as plaintiffs Intel trademark, are required to be given a broad protection.
27KANGAROKangaroo Industries2004 (29) PTC 175Mark declared as well known mark.
28KIT KATSociete Des Produits Nestle,S.A.,1800 Vevey,Canton of Vaud,Switzerland.Judgement in TA/1/2007/TM/DEL/(C.M.(M)) No. 148 of 2002) dt. 11/12/2009KIT KAT is a Well-known having trans-border reputation.
29LETTER*T IN A CIRCLE House markTata Engineering & Locomotive Co. Ltd.2006 (32) PTC 296Respondents who have established their reputation and goodwill in automobiles and several other goods are entitled to have the trade mark safeguarded. BENZ case applied.
30Logo *M’ in the distinctive style and design of the famous golden archesMcDonald’s Corporation, U.S.A.1999 PTC 9The Logo ‘M’ is a well-known and famous logo and courts have recognized the existence of trans-border reputation.
31MAHINDRA; MAHINDRA & MAHINDRA; M & MMahindra & Mahindra Ltd.2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012Mark is in use for five decades. The name has acquired a distinctive secondary meaning in the business or trade circles
32MARS for chocolates, confectionery etc.Mars Incorporate,USA2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241Use of mark by the defendant ‘is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.
33NIRMA See also Sl.No.32Shantaben 1 Karasanbhai Patel and Others2001 PTC 427NIRMA is an invented word. It has acquired great reputation. The owners have been spending huge amount on advertisement for their trade mark. Their sales in relation to various goods are mounting every year.
34NIRMA for washing & cleaning preparationsS.K.Patel2004(29) PTC 634The principle laid down by various courts was applied namely where a regd. Trade mark has got reputation & goodwill they cannot be permitted to be used by another person even in respect of different goods.
35NIVEABeiersdorf A.G.2009 (39)PTC 38Nivea is a recognized product of high quality and has international reputation and recognization. These are marks where the line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular are specific type of goods or services. .
36ODONIL & ODOMOS For mosquito repellantsBalsara Hygiene Products.2004(29) PTC 226Plaintiff has built up reputation in the mark, goodwill & huge sales turnover.
37OMEGAOmega S.A.,Bienne,Switzerland2003 27 PTC 327The Plaintiff company has been using the trade name OMEGA for more than 50 years and has enjoyed reputation for its products.
38PANADOL & PANADOL EXTRASmithKline Beecham Pic.2001 PTC 321Defendants deliberately used Plaintiffs well known mark.
39PEPSIPepsi Inc.2006(32) PTC 225Pepsi enjoys a huge reputation and goodwill not only in India but also internationally .
40PHILIPSPhilips NV NetherlandsAIR 1983 P&H418Is a household mark and has acquired enviable reputation in India and throughout the world.
41PIZZA HUT Logo in respect business relating to restaurantsPizza Hut International LLC, USA2003(26) PTC 208(Bom)Plaintiffs enjoy a worldwide reputation, including in India. It is settled law that if the marks/logos enjoy a trans border reputation, they are entitled to be protected against infringement and passing off in India.
42PLAYBOY for magazine and several other goodsPlayboy Enterprises Inc.,2001 PTC 328Plaintiff has demonstrated its strength due to the degree of distinctiveness, fame and reputation of the trade mark Playboy. The trade mark acquired world wide circulation and publication in as many as 16 foreign countries.
43RED BULLRed Bull GmbH2003(27) PTC 164Trade Mark RED BULL is one of the best known trade marks not only in Austria but all over the world. Registration of domain name by the respondents was held to be in bad faith.
44REVLONRevlon Inc.1997 PTC 394Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.
45TACO BELL for Restaurant businessTaco Bell Corporation,USA2000 PTC (20) 554Plaintiff operated over 6000 restaurant worldwide using name taco bell as logo. Mark registered in more than 70 countries including India in classes 29 & 30. Defendants intention was to trade upon the famous mark of the plaintiffs.’
46TATA SEE also TATA CASETata Chemicals Limited2003 (27) PTC 422 2004 (29) PTC 522 (Delhi) 2001(21) PTC 129 2009 (40) PTC 54The trade mark TATA is a household name in respect of various products all over India.TATA is a household word in India and solely and exclusively associated with the House of Tata.TATA is a well known mark.In the decision list of cases where enforcement of rights have succeeded is given.
47TELCOTata Engineering and Locomotive Co. Ltd.,2001 PTC 562TELCO mark has gained transborder reputation and goodwill. The mark is identified with the owners and their products throughout India as well as various countries in the world.
48TOSHIBAToshiba Corporation,Japan.2005 (30) PTC 188TOSHIBA held as a well known mark and registration cannot be rectified for non-use.
49USHA For sewing machines, electric fans etc.Not given2004(29) PTC 647The respondent had built up long reputation and goodwill in India as well as abroad. The same cannot be permitted to be benefited by the appellant in respect of different goods or by different architecture or design.
50VICKS VAPO RUBRichardson Vicks Inc.1990 PTC 16Prima facie the mark as well as bottles distinctive labels and metal containers have become well known and acquired a great reputation (para 32).
51VOLVO for automobilesAktiebolaget Volvo1998 PTC (18) 47Trans-border reputation is recognized by Indian courts and that actual sale in India is not necessary for a Plaintiff to establish its goodwill and reputation in India.
52KIRLOSKARKirloskar Proprietory LimitedAIR 1996 BOM-149The mark KIRLOSKAR used by the plaintiff had acquired a secondary meaning and had become a household word.
53WOOLWORTH In respect of clothing etcF.W.Woolwor th Company2004 (29) PTC 477Trans-border reputation enjoyed by the mark WOOLWORTH is not something to be not taken account of. The world wide reputation of the mark was recognized.
54YahooYahoo, Inc.1999 PTC 201The services of the Plaintiff under the Trade Mark/Domain name ‘Yahoo’ have been widely publicized and written about globally.
55Polo (label with device of polo player)POLO/LAUREN COMPANY IP (USA)Decision dated 19.12.2011 in CS(OS) 1763/2005Having regard to the evidence placed on record the plaintiff has established that the registered trademark of the plaintiff is a well-known mark as defined in Section 2 (z) (g) of the Trade Marks Act
56GE MonogramGeneral Electric Company (USA)Decision dated 21.12.2011 in CS(OS) 1284/2006It can hardly be disputed that GENERAL ELECTRIC as well as GE whether written in plain letters or in a stylized form such as monogram are well known marks of the plaintiff within the meaning of Section 2 (z) (g) of the Trade Marks Act
57KALPATARUKalpataru Properties Private Limited, Santacruz MumbaiSuit No 2976 of 2010 decided on 29th July 2011“The Plaintiffs have thus established that .’Kalpataru’ is a well known mark ” .”I have held above the plaintiff’s mark “KALPATARU” to be a well known mark”
58CastrolCastrol LimitedJudgement in Suit No. CS(OS) 1369/2006 Decision dated 18/08/2011High court observed CASTROL is a well known Trade Mark within the meaning of Sec. 2(1) (zg) read with Sec. 11(6) of TM Act 1999.
59LupinLupin LimitedJudgement in Suit (L) No. 3137/2011 Decision dated 05/12/2011The High Court observed Lupin, a Well Known Trade mark.
60CanonCanon Kabushiki Kaisha, JapanOrder in OA/43/2005The Appellate Board Concluded that CANON mark is a well known term under Sec. 11(10) of TM Act 1999.
61MicrosoftMicrosoft Corp.Judgement in Suit No. CS(OS) 2163/2010 order dated 03/02/2014Court has specifically determined that Microsoft is a well-known trademarks and it is known to the most of the people.
62NestleSociete des produits Nestle S.A.Judgement in Suit No. CS(OS) 551/2010 dated 08/03/2013Court has specifically determined that Nestle is a well-known trademarks
63BBCBritish Broadcasting CorporationCS (OS) 1171/2007Hon’ble Court has determined the mark as a well-known in Indian Territory in its observation
64DupontE. I. du Pont de Nemours and CompanyCS (OS) 2998/2012Hon’ble Court has determined the mark as a well-known in its observation
65CandidGlenmark Pharmaceuticals Ltd.Suit No. 182/2013Hon’ble Court has determined the mark as a well-known in its observation
66AMULKaira District Co-Operative Milk Producers Union Lld.OA/56/2011/TM/KOLThe IPAB Emphasised AMUL as a well-Known Trademark.
67RajnigandhaDharmpal Satyapal Ltd.CS (OS) 381/2012Hon’ble court observed that Plaintiff has established the mark as a well known trademark.
68Louis VuittonLouis Vuitton MalletierCS (OS) 270/2014 and CS (OS) 90/2006Hon’ble Court has determined the mark known in Indian Territory in its observation
69GOOGLEGoogle Inc.CS(OS) 317/2011 ; CS(OS) 2907/2011The Court has observed Google worldwide reputation and provided the relief on this basis only.
70HAVELLSHavells India LimitedCS(OS) 3770/2014The Court accepted Havells a well known TM
71BLOOMBERGBloomberg Finance, LPCS(OS) No. 2963/2012Interim Order was passed in favour and same was confined vide order dated 12/02/2014 in which HC Observed Bloomberg as well-known.
72JOHN DEEREM/s Deere & Co. Ltd.CS (OS) 3760/2014The Court observed John Deere a well known TM (para 13 of order dated 05/03/2015).
73RAYMONDM/s Raymond Ltd.OA/16-17/2010/TM/CHThe IPAB observed this mark as Well-known TM.
74FERRERO ROCHERM/s Ferrero SpaCS (OS) 404/2012The Court observed this mark as Well-known TM.
75FORDM/s Ford Motors Co.CS (OS) 1710/2015The Court observed this mark as Well-known TM.
76TOYOTAM/s Toyota Motors CorporationCS (OS) No. 62/2007The Court observed this mark as Well-known TM.
77TIMBERLANDM/s TBL Licensing LLC,CS (OS) No. 2158/2007The Court observed this mark as Well-known TM.
78SONYM/s Sony CorporationOA/49/2007/TM/KOLThe High Court and tribunal has observed this mark as Well-known TM.
79ULTRATECHM/s UltraTech Cement Limited,Suit No. of 2288/1986The Court observed this mark as Well-known TM.
80VOGUEM/s Advance Magazine Publishers INCSuit No. 3079/2003Suit No. 2860/2011
81VIRGINVirgin Enterprises LtdOrder No.73/2005 (IPAB)Suit No. 2860/2011
82SIEMENSMs. Siemens AktiengesellschaftCS (OS) No. 3785/2014The Hon’ble Court has determined the subject mark as a well-Known TM
83LAVASALavasa Corporation Ltd.Suit No. 562 of 2013The Hon’ble court in its order dated 19/07/2013 has observed that subject mark is a well-Known Trademark
84MOTHER DAIRYMother Dairy Fruit & Vegetable Pvt. Ltd.CS (OS) 2399/2010High Court of Delhi, observed “MOTHER DAIRY (Blue Logo)” is a well known TM
85MONGINIS for cakes, pastries and other bakery productsMonginis Foods Private Limited at B-60, Off Link Road, Andheri West, Mumbai 400053.N/AThe Registrar observed that the Mark is well-known in reference to cakes, pastries and other bakery products.
86MARUTI For Industrial Oil, Automobile, Business administration and retail outlet, Research & Development.Maruti Suzuki India Limited, At Plot No. 1, Nelson Mandela road, Vasant Kunj, New Delhi-110070N/AThe Registrar observed that the Mark is well-known in reference Automobile, Business administration and retail outlet, Research & Development
87GODREJGodrej & boyce MFG. Co. Ltd., at Firojshanagar, Vikhroli, Mumbai-400079N/AThe Registrar observed that the Mark is well-known trademark in view of its wide presence in the market
88BIOCON For Pharmaceutical preparation, Business administration & retail outlet and Research & Development.Biocon Limited 20th K.M. Hosur Road, Electronic City, Bangalore-560100N/AThe Registrar observed that the Mark is well-known in reference Pharmaceutical preparation, Business administration & retail outlet and Research & Development
89BrahMosBrahMos Aerospace Private Limited at 16 Cariappa Marg, Kirby Place Delhi Cantt. – 110010(CS (OS) No. 2655/2013Hon’ble Justice in the matter observed that “I have no hesitation to come to the conclusion that the trademark Brahmos is a well-Known trademark.”
90TCS For Software development and allied servicedTATA SONS LIMITED, Bombay House, 24 Homi Mody Street, Mumbai-400001N/AThe Registrar observed that the Mark is well-known in reference Software development and allied serviced.
91LuLu for Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion StoresLuLu International Shopping Mall Private Limited, 34-1000, NH: 47, Edapally, Kochi, Kerala – 682024N/AThe Registrar observed that the Mark is well-known in reference to Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores.
92INDIA GATE For Food grains and allied Products.KRBL Limited, 5190, Lahory Gate, Delhi. 110006N/AThe Registrar observed that the Mark is well-known in reference to Food grains and allied Products.
93ZEE With reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education etc.ZEE Entertainment Enterprises Limited, B-10, Essel House, Lawrence Industrial Area, New Delhi, 110035.N/AThe Registrar observed that the Mark is well-known with reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education, Processing of Precious Metals, Finance, Technology, Health care and Allied Services.
94GARNIER Relating to ‘toiletry and cosmetic products.L’OREAL S.A. At 14, Rue Royale Paris 75008 France.N/AThe Registrar observed that the Mark is well-known with reference to ‘toiletry and cosmetic products’.
957 ELEVEN Relating to ‘retail chain, allied products and services7-ELEVEN, INC. At 3200 Hackberry Road, Irving, Texas 75063, USAN/AThe Registrar observed that the Mark is well-known with reference to ‘retail chain, allied products and services’.
96ORAL-B Relating to oral care productsProcter & Gamble Business Services, At 1959 Upper Water Street, Suite 800, Halifax, Nova Scotia, B3J 2X2, Canada.N/AThe Registrar observed that the Mark is well-known with reference to oral care products.
97KESARI In respect of travel and tourism ServicesKesari Trust, Kesari Trust, At B/5, Silver Queen CHS, Soonawala Agiary Marg, Mahim, Mumbai-400 016, Maharashtra, IndiaN/AThe Registrar observed that the Mark is well-known with reference to travel and tourism Services.

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Delhi High Court Held that Exact use of Trademark needed to constitute as Trademark Infringement

Recently Delhi supreme court during a case of Mankind Pharma Ltd Vs Chandra Mani Tiwari and Anr. held that ‘to constitute infringement under Section 29(5), it’s required to possess an equivalent or identical brand name and merely having an identical or deceptively similar trademark to the registered trademark wouldn’t constitute infringement.’

Brief Facts

The plaintiff i.e. the Mankind pharma Ltd. was the registered proprietor and is registered in 42 other classes also . It had been using the mark since three decades by adding prefix or suffix to the mark. On November 5 , 2016, Plaintiff found through Trademark registry records that the Defendants were using the brand name “Mercykind Pharmaceuticals Private Limited” and was doing the business under the trademarks like “Mercymox”, “Mercycough” and “Mercycope”.

Cease and Desist notice was sent to the defendants to prevent using the trademark, but an equivalent was refused to comply giving false and frivolous reasons. Therefore Plaintiff instituted the suit against defendants seeking final injunction to restrain the defendants from infringing the plaintiff’s trademark/Trade name “Mankind” and its series of marks with “Kind” and from passing off their business/ goods as that of the plaintiff.

Issues

The issue that arose within the case was whether the Defendant is guilty of infringing the Plaintiff’s trademark and spending off of the plaintiff’s goods by using the word “Kind” in his brand name of “Mercykind”?

Plaintiff’s contentions

It was contended that the Defendants were carrying on their business by impersonating themselves to be under the umbrella of the plaintiff. it had been further contended that the Defendants brand name “Mercykind Pharmaceuticals Private Limited” is deceptively almost like the mark of Plaintiff “Mankind”. it had been argued that any brand name within the drug company containing the element “Kind” would amount to dilution of the plaintiff’s documented mark and end in infringement or passing off plaintiff’s reputed brand name “Mankind”.

Defendant’s Contention

Defendants on the opposite hand contended that mere search of the web records of the registrar of Trademarks in school 5 would reveal that there are over 120 trademark registered or pending, aside from the registrations or applications within the name of the plaintiff, within the name of several other entities/ individuals, each of whm have registered or have applied for registration of marks with suffix “Kind”.

It was further argued that Defendant’s Trademark “Mercykind Pharmaceuticals Private Limited” when taken as an entire is totally different from the Plaintiff’s mark. They argued that mere presence of publici juris term“Kind” within the mark doesn’t make the marks of the plaintiff and Defendant deceptively similar. it had been submitted that the plaintiff isn’t having any trademark registered on their name of the mark “Kind” therefore, mercikind didn’t constitute infringement within the meaning of section 29(5) of the Trademarks Act, 1999.

It was further submitted that the marks Atorkind and Atorvakind are visually, structurally different from one another as admitted by plaintiff itself within the reply to examination report issued on the appliance of the plaintiff for registration of the mark “Atorvakind”, then Mercykind and Mankind can’t be same.

Court’s Decision

Court considered the very fact that since atokind and Atorvakind aren’t similar, it itself constitutes the relevant fact to be considered for the needs of interim injunction. Therefore, the court held that since the plaintiff concealed this fact, it had been disentitled to any equitable relief.

Court analysed the question of whether the affixation of the name of the Defendant No.2 with the word Mercykind ” amount to use as a trademark for the needs of section 29 of the Trademarks Act, 1999?

The court answered the question in negative, it had been held that “mere affixation of the name of the Defendant No.2 as manufacturer or marketeer of the drugs/medicines sold by the Defendants wouldn’t qualify as a use thereof as a trade mark even under Section 29(6) of the Act.’

Court also opined that drugs are prescribed by the doctors by their generic name and not brand name , and hence the showing of the manufacturer’s name within the drug was of not much consequence.

Therefore, distinguishing between cases of infringement by use of ‘trade name’ under Section 29(5) of the Trade Marks Act, and therefore the cases of infringement by use of ‘trademark’ under sub-sections (1) to (4) of Section 29, the Court held that ‘to figure out a case of infringement by use of ‘trade name’ under Section 29(5), mere similarity or deceptive similarity with the registered trademark wasn’t sufficient which there has got to be exact use of registered trademark or a part of it because the brand name of the business. The test of “similarity or deceptive similarity” was applicable just for cases of infringement by use of ‘trade mark’ covered by sub-sections (1) to (4) of Section 29.’

Contact BIAT Legal LLP for any Intellectual Property related matter. the team of professional helps their clients in protecting their trademark/ trade name.

What steps should Trademark owners take to avoid future Litigation

In recent times it is very important to protect your brand name as others may commercially disparage your brand. Trademark infringement is very common these days, therefore it is always advisable to take protection of your brand name. 

Trademark owner at initial stage and do so much to avoid future litigation or conflicts. The following steps are advisable in order to safeguard the trademark-

Step 1- Do your Research and Search Properly

The selection of a Trademark is one of the most crucial steps for creating an interesting corporate identity or a brand. One should try to have a “Storyboard” with objective reasoning for selecting a particular trademark. At the same time application of mind in selection of brand name is equally important. One should try from the very beginning not to infringe existing trademarks (Even accidentally). Before choosing a brand name one must check whether a similar mark already exists or not. An official trademark is searched on the official website of ipindiaonline.gov.in. Through the website one can easily search for their name and they get to know chances for objections to come on their brand name. This information can prove to be helpful in streamlining the decision to use a particular mark, logo, and/or word as a trademark.

There are marks which are already in use but are not registered, so in this case one has to do proper research and investigation before application of a mark as registration is given on prior use basis.

Step 2- Avoid the use of Descriptive/ Common words as marks

A well known practice in Trademark law is not to use descriptive words/common or generic words in their mark. When one is well aware that “Bag” is a common word and is already in public domain, then using it as a trademark is an act of “Self-sabotage” and must not be adopted. 

It is provided that one can use descriptive or common words as a trademark if by their usage it has obtained its distinctiveness by way of long and extensive usage in the market.

Further as a matter of practice in Indian legal fraternity, a trademark owner has a choice of using “CONDITIONS AND LIMITATIONS” on the use of a particular trademark at the time of filing of a Trademark application. Such practice is common in the United States also where they use “Disclaimers” to waive off any rights in relation to a descriptive part of mark.

In India this process might help in minimization of frivolous litigation.

Follow up and Renewal of the Trademark

A Trademark owner through its attorney, must conduct a thorough follow up routine during the pre-registration stage and check the status page on the Trademark registry website on a constant basis as an ideal process. There could be situations where objections could be raised by trademark registry and accordingly within a specified time its reply is to be filed. Or else there could be a situation where a mark is being accepted and advertised in the journal but is being opposed by the third person, then in that case a counterstatement would be filed in response to Notice of opposition. A routine follow up would help trademark owners to meet deadlines and may eventually help in the registration of the trademark.

The trademark registry grants trademark protection for the period of 10 years and after that it has to be renewed after every 10 years. The Trademark owners therefore must be aware of the deadlines and must file renewal applications on a timely basis. The trademark must be renewed on time to avoid any abandonment claims.

As per Trademark Rules, 2017, Trademark owners can file for its renewal one year before the date of expiration of trademark.

Conclusion

The importance of Intellectual Property rights, especially w.r.t trademarks has evolved over the past few years in India. Hence awareness in this field is of utmost priority. The Trademark owner must be aware of the basic steps that are mentioned above to have a smooth trademark filing process.

BIAT Legal LLP helps you in selection of the Trademark by doing a proper research and search of the name. 

Delhi High Court restrains “Thefauxy.com” from Infringing the Trademark “Budweiser”

Delhi High court vide its order dated July 30, 2020 granted an ad-interim injunction in a suit filed by Budweiser for Trademark infringement, unfair competition, and commercial disparagement and dilution and tarnishment of its goodwill and reputation of the brand “Budweiser”.

Brief Facts

In an instant case Defendant No. 1,2 and 3 who run a website by the name of www.thefauxy.com , posted a video on their social media handles such as Twitter, Instagram and Youtube. The video depicted a comedic sketch that is modeled as a news report, testing the veracity of the claim that the plaintiff beer bottle contains urine.

In the video it was shown that Plaintiff’s beer contains Urine which Defendant No. 1 has tasted from the sample from the pathology lab. 

Ddenant No. 2 on the other hand has claimed that the video shown by Defendant No. 1 is fake and false, and claimed further that plaintiff’s beer brand “Corona ” contains coronavirus.

To which plaintiff had filed an infringement suit against Defendants.

Plaintiff’s Contention

The Plaintiff contended that the suit has been instituted against the Defendants to protect the intellectual property rights and reputation of the plaintiff which has been exploited by the defendant’s posts on social media which states the fake news which states that the employees of the plaintiff have been urinating the beer that is sold to its customers.

By posting such videos on social media, it ruined the plaintiff’s reputation. It was claimed that over 5900 views had garnered as on the date of filing of the suit and as a result became viral on the internet and caused the publication of several hundred defamatory posts and videos across social media.

 On July 2, 2020 the news made “Budweiser” to trend as the no.1 hashtag on twitter in India. Plaintiff also submitted that on social media there were no disclaimer of fake news/ fictitious report on the youtube page of the defendants. 

Contentions of Social media platforms- Youtube (Defendant No.4) and Twitter (Defendant No.5)

The counsel submits that youtube and twitter are just an intermediary to upload the content as the content are not uploaded by defenats themselves. The primary grievances was against defendant no. 1,2 and 3. 

Furthermore, both the defendant no. 4 and 5 were of the view that the impugned video does not amount to defamation and disparagement.

Laws relating to commercial disparagement

Basically disparagement is the publication of false and derogatory statements about a business or individual which will discourage or prevent the consumer base of the business or individual.

Disparagement is different from defamation as defamation hurts the personal reputation and goodwill of a person as compared to disparagement which hurts the economic interest.

According to section 29 of Trademarks act, 1999 any use of a trademark which is against the reputation of the trademarks amounts to infringement.

The Bombay High Court has delinitated the ingredients to be present to make a statement disparaging. It must –

  1. Be a false statement
  2. Be made with a malicious intent.
  3. Cause special damage to the plaintiff’s business.

Court’s Observation

The court observed that posting such videos hampers the reputation and goodwill of the plaintiff’s business and therefore restrains defendants from reproducing, broadcasting, communicating to the public, screening, publishing, and distributing the imputed video or any other video on any media or platform and promoting the impugned video on various social media amounting to infringement of plaintiff registered mark Budweiser” and also amounting to commercial disparagement of the plaintiff’s product.

Conclusion

Therefore, it was held by the court that defendants were commercially disparaging the plaintiff’s reputation and goodwill and business and therefore prohibited defendants from further promotion and distribution of impugned video and related social media posts.

However, the court did not give any direction for removal of the video from social media accounts which was also contended from plaintiff’s side. 

The matter is still pending before Delhi High court and is listed on september 1, 2020. Watch this space for updates.

Contact BIAT Legal LLP for any Trademark infringement cases. 

A Legal Analysis on Non-Conventional Trademarks

Nature and Scope of Non-Conventional Trademarks

Traditionally Trademarks of name, logo, symbol, tagline get registered and are referred to as conventional trademarks. Although now a days trademark isn’t limited to only registration of name, logo, taglie, symbol etc but it also includes Trademark of Smell, taste, Texture, Hologram, motion, shape and therefore the ambience of the products and services. Thus when a mark goes beyond the realms of the normal conventional category of being judged solely by the attention it’s referred to as Non-Conventional marks. within the Trademarks Act, 1999, it defines non-conventional Trademarks also .

Problems with reference to Non-conventional Trademarks

Consumers identify certain non-conventional trademarks with reference to their shoes and hues but when it involves taste and smell marks it can cause confusion within the minds of consumers. so as to get registration as a mark, it can acquire distinctiveness albeit it’s not inherently distinct through its use and thus qualify to be a trademark.

Graphical representation of Non-Conventional Marks

Graphical representation of a mark is taken into account to be a sine qua non so as to register a trademark in India. A trademark application must be graphically represented and therefore the mark must be capable of being put during a physical form within the register. it’s also needed to be published during a journal. Graphical representation of non-conventional marks may be a practical problem. it’s considered to be a significant problem in registering the non-conventional trademarks. Non-conventional trademarks are as follows-

Odour Mark

Recently this mark has gained popularity in Trademarks. within the case of Ralf Seickman Vs German Patent and Trademark Office Database , during this case the smell mark wasn’t taken into consideration and was rejected because graphical representation criteria weren’t fulfilled. the most issue that arose during this case was that whether olfactory mark which is described as balsamically fruitys cent with hint provided of cinnamon might be registered as a trademark with reference to the certain services. ECJ during this case has stated that graphical representation isn’t sufficient and it must be clear and precise to clear the proper of exclusivity and also it must be considered intelligible to those persons who have interest in inspecting registers.

Sound Mark

The Graphical representations are often done by musical notations and written descriptions. Within the case of Shielf Mark BV Vs Joost Kist h.o.d.n memex, ECJ held that the need of graphical representation isn’t met when the sound is represented graphically by means of description using written communication . When sound is shown as a stave divided into measures, musical notes etc the graphical representations are said to be accepted. it’s even been stated that alongside it a written description of a mark within the sort of musical notes must also be needed to be filed with the registry.

Colour Mark

Single colour and amalgamation of unique colour of two forms a color mark. Combination of colours are often included in several national legislations. During a case of Libertel Groep BV Vs Benelux Trademark office, the difficulty was raised whether one colour mark is often registered as a Trademark? The ECJ reiterated the standards of graphical representation as stated in Ralf Seickman case, it had been held that such representation must be clear, precise and self contained. It must be easily accessible, durable and objective.

Scent Trademark

In the cases associated with scent trademarks the registry takes place with reference to shield mark doctrine. Scent marks got to be distinctive of the merchandise and it must not be utilitarian or functional. Thus the fragrance of the scent/ perfume can’t be registered, however the outline of the scent is required.

Protection of Non-Conventional Trademarks in India

When it involves India, in India only a few non-conventional trademarks are registered. In India doctrine of shield mark with reference to graphical representation of sound marks are imported. Manual describes that marks which aren’t capable of distinguishing one from others aren’t meant to urge registration. In India Yahoo!s yodel is the first ever no conventional trademarks to be registered. it had been represented through musical notes. Indian Trademark industry has also registered the sound mark of ICICI bank within the notes which form the jingle. For people that are visually impaired or illiterate, distinguishing character of the form or sign plays a crucial role.

Conclusion

India is additionally incorporating in registration of non-conventional trademarks, although few obstacles in trademark registration must not be considered as discouragement. Non-conventional trademarks create a psychological impact on consumers and it’s gained some significance in recent times. India has accepted the sound mark of intel. The concept and law in India are evolving day by day.

Contact BIAT Legal LLP for getting best services for Non-conventional Trademark registration.