Intellectual property rights help to enhance the knowledge of the individual to assert ownership of their creativity and innovation in the assorted fields. There are some main kinds of Intellectual Property rights and one vital is Trademarks. Basically, trademarks are for products and services to be identified with their mark whether it is in word or device for the goods and services. Trademark protects both the interest of the consumer and the commercial trader as the consumer is able to distinguish the product with the help of the trademark.
In India protection of trademarks is given in The Trademark Act, 1999 which comes into force repealing the Trademark and Merchandise Act, 1958 to full fill the requirements of WTO and TRIPS. The present act offers few new features to reap the advantages of registering trademark rights and also Introduce us with well-known trademarks which are not used for all classes of goods and services, still they are protected across all classes of goods and services at globe level.
Indian Trademark Law provides an exceptional/extraordinary protection or a condition for trade marks that are ‘well-known’ in international, national and cross border reputation. It protects such trade marks from any kind of infringement.
What are Well-known trade marks?
Well-known trademarks are those ‘Special marks’ which makes it Company/ organization/ enterprises distinctive from the others. According to The Trade mark Act, 1999 refers that as “well known trade mark”, 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. A well- known trade marks has a Goodwill and Reputation that is protected not only in the mother country but across the nations and across the different categories of good and services.
As per the current data provided by the https://ipindia.gov.in/index.htm there are total 137 registered trademarks, which are labelled as Well- Known trademarks. Some of which are:
Provisions for Well- Known
The Trade Marks Act of 1999 lays down the factors to be considered while determining a Trade Mark to be a Well-Known, which includes knowledge about the mark in relevant sections of the public, duration and extent of use, registration or application for registration, and the record of successful enforcement. Section 11(7) of the Act provides additional factors for consideration by the Registrar. Once a trade mark has been determined to be well-known, it is granted protection against identical or similar trademarks, and the Registrar takes into account the bad faith involved in the application or opposition. Rule 124 of the Trade Mark Rules, 2017 outlines the process for requesting a determination of a well-known trademark by the Registrar.
|Benefits of Well-Known Trade Marks
|Well-known trademarks are more easily identified than registered trademarks.
|Protection across all classes of goods and services
|Even if a well-known trademark is not used for all classes of goods and services, it is protected across all classes of goods and services.
|Restricted registration of similar or identical marks
|Registrar of trademarks are restricted to allow the registration of mark which are similar or identical to a well-known trademark.
|Stronger legal position
|Throughout all legal proceedings, the owner of a well-known trademark can always claim and emphasise that he is the owner of a well-known trademark and has a better right than others.
Some Major Case Laws for Well-Known Trade Marks
- Rolex Sa Alex Jewellery Pvt Ltd & Ors, CS(OS) 41/2008
In this case, the plaintiff, Rolex, a Swiss watch company, sued the defendant for trademark infringement because the defendant was using the name “Rolex” on their artificial jewellery boxes. The court barred the defendant from using their trademark because the plaintiff’s trademark was well-known and highly reputable, and the defendant’s use would cause confusion among consumers who would believe the jewellery was from the plaintiff’s brand “Rolex SA.”
- Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu
The Hon’ble Delhi High Court in this case barred the defendant from using the name “Microsoft” because it was a well-known and highly reputable brand used by the public on a global scale. The Court continued by stating that because the plaintiff’s trademark had unique goodwill and reputation, it would be illegal for the defendant to copy the name of the well-known trademark.
A well-known trademark is a exclusive asset for a company, providing it with numerous benefits, with no similar marks permitted for any goods or services. However, it is important to maintain the exclusivity of these well-known trademarks in order to preserve their authenticity.
The Paris Convention rules on the protection of well-known trademarks were included as part of the TRIPS agreement, and all signatory members of the convention were required to make laws for the protection of well-known trademarks across trans-border areas. In line with such international conventions, India has introduced legislation to protect the rights of well-known trademarks.