The concept of Well-Known Trademark is a crucial element in modern intellectual property law, granting enhanced protection to highly reputed marks beyond the traditional scope of goods or services for which they are registered.
Definition and Core Principle of Well-Known Trademark:
Imagine a brand that’s so famous, like Nutella or Nike. When you see their logo, you instantly know who they are and what they are about, right?
A “well-known trademark” is basically a super famous brand. It’s so well-known that if someone else tried to use that same (or a very similar) name or logo for different products or services, people would still think it’s connected to the original famous brand. They might think the famous brand is now selling those new products, even if they are not!
It’s about protecting that strong connection in people’s minds between the famous brand and its quality or reputation, no matter what product or service is being offered.
The fundamental objective of protecting well-known trademarks is to:
- Prevent Unfair Advantage and Detriment to the distinctive character or repute of the earlier well-known mark.
- Extend Protection (Anti-Dilution): This concept provides a special regime of protection, particularly under dilution claims, where the trademark owner must establish that the mark has a reputation. Protection may extend even to goods or services which are not similar to those for which the mark is registered, provided the unauthorized use suggests a connection and is likely to damage the owner’s interests.
Indian courts have delivered several significant judgments on well-known trade marks in the last couple of years, emphasizing protection against infringement, dilution, and passing off. Here are some key judgments and developments.
Recent Notable Judgments on Well-Known Trademarks:
- Delhi High Court Declares “TAJ” a Well-Known Trademark, Citation: The Indian Hotels Company Limited v Gaurav Roy Bhatt, CS(COMM) 717/2023, Delhi High Court:–
- In para 19 of the judgement the Hon’ble High Court of Delhi held: “The long duration for which the TAJ marks have been in use by the plaintiff, wide geographical area of their use, their knowledge among the general public and their goodwill and reputation due to the extensive promotion, publicity and extensive revenue generated by the plaintiff, in India as well as other countries, the TAJ marks have achieved the status of well-known trade marks. Accordingly, the plaintiff fulfils all the criteria set out in Section 11(6) read with Section 11(7) of the Act for declaring the TAJ marks as well-known trade marks in respect of hotels and other related services in the hospitality industry”. (Download Judgement)
- Mondelez India Foods Pvt. Ltd. (Formerly Cadbury India Ltd.) vs. Neeraj Food Products, Citation: CS(COMM) 393/2018, Delhi High Court, decided on July 26, 2022, by Justice Prathiba M. Singh:-
- Mondelez (formerly Cadbury India) sought a permanent and mandatory injunction, damages, and other reliefs against Neeraj Food Products for infringing its trademark and copyright related to “CADBURY GEMS/GEMS”.
- Neeraj sold chocolates under the mark “JAMES BOND” using an allegedly identical colour scheme and packaging as Cadbury’s GEMS. Cadbury claimed this caused deception and confusion.
- Permanent and mandatory injunctions were granted restraining the defendant from using the infringing mark and packaging.
- The defendant was also ordered to pay actual costs of Rs.15,86,928 to the plaintiffs. Delhi High Court explicitly recognized “CADBURY GEMS” as a well-known trademark in this judgment. (Download Judgement)
- NUTELLA WELL-KNOWN TRADE MARK (Ferrero SPA & Ors. vs. M.B. Enterprises), CS(COMM) 593/2021 Decided by Delhi High Court:-
- In October 2021, the Food Safety Officer (FDA, Maharashtra) informed the plaintiffs of a raid on the defendant’s premises, during which a large quantity of counterfeit “NUTELLA” and packaging materials were seized.
- The Court noted that the plaintiffs hold valid registrations for “NUTELLA” and its variants across multiple classes. Court emphasized that stricter scrutiny is called for in trademark disputes involving edible items, as consumer confusion can have serious public health implications.
- The Court permanently restrained the defendant (and related parties) from infringing or passing off the plaintiffs’ trademarks, packaging, or trade dress and from dealing in any counterfeit “NUTELLA”.
- Based on international declarations, market presence, and evidence of use/recognition, the Court declared “NUTELLA” a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999. (Download Judgement)
Determining Well-Known Status:
The determination of whether a trade mark is well-known is made by the competent administrative or judicial authorities. For example, under the Trade Marks Act, 1999, the Registrar or a court determines this status.
The Registrar of the Trade Marks Registry shall take into account any relevant fact, including the factors specified under Section 11(6) of the Trade Marks Act, 1999. These factors align closely with international guidelines, such as the WIPO Joint Recommendations.
In India, an application for the determination of a well-known trade mark under Rule 124 of the Trade Marks Rules, 2017, must be filed on Form TM-M with the prescribed fee.
If a trade mark has already been determined as well-known by a competent Court or Tribunal, the Registrar shall proceed for publication in the TM Journal directly.
