Well-known trade and service marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a “well-known mark, countries may take advantage of the WIPO Joint Recommendations on the Protection of Well-Known Marks.
Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.
You should be aware of the fact that a number of trademark laws merely implement obligations under Article 16.3. of the TRIPS Agreement and protect well-known registered trademarks only under the following conditions:
- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation
- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and
- that his interests are likely to be damaged by such use.
In order for a mark to be considered to be a well-known mark, it is sufficient that the mark is well known in at least one relevant sector of the public. It is not permitted to apply a more stringent test such as, for example, that the mark be well known by the public at large. The reason for this is that marks are often used in relation to goods or services which are directed to certain sectors of the public such as, for example, customers belonging to a certain group of income, age or sex. An extensive definition of the sector of the public which should have knowledge of the mark would not further the purpose of international protection of well-known marks, namely to prohibit use or registration of such marks by unauthorized parties with the intention of either passing off their goods or services as those of the real owner of the mark, or selling the right to the owner of the well-known mark.
The protection which should be granted to well-known marks in application of the Provisions is protection against conflicting marks, business identifiers and domain names. The Provisions do not apply to conflicts between well-known marks and geographical indications or appellations of origin. However, the Provisions constitute a minimum standard of protection, and Member States are of course free to provide for broader protection.
A well-known mark is entitled to protection by a Member State at least as of the time when the mark has become well known in the Member State. This means that a Member State is not obliged to protect an “internationally” known mark if that mark is not well known in that State, or the mark is known albeit not well known. However, as expressed by the words “at least,” protection may be granted before a mark has become well known. Cases involving the protection of a well-known mark very often involve an element of bad faith. In such cases, ad faith should be considered in balancing the interests of the parties involved in cases concerning the enforcement of well-known marks. In the case of use of a conflicting mark, the time period of at least five years must be calculated from the moment from which the owner of the well-known mark had knowledge of the conflicting use.
It follows that there is no obligation to prohibit the use of a mark which is in conflict with a well-known mark where the owner of the well-known mark has knowingly tolerated such use during at least five years. The question of whether knowledge by a licensee of the use of a conflicting mark is attributable to the owner of the well-known mark is not dealt with by this paragraph and has, consequently, to be decided under the applicable law. A potential problem for the owner of a well-known mark could be a situation in which a mark which is conflict with a well-known mark was registered in good faith but never used. This situation will, in most cases, be taken care of by provisions under national or regional laws providing that the registration of a mark which has not been used for a certain period of time becomes liable for cancellation. However, if such a use requirement does not exist, a situation is conceivable in which a mark which is in conflict with a well-known mark has been registered in good faith but has never been used and had therefore not attracted the attention of the owner of the well-known mark.
Indian Judiciary on Well-Known Trademarks
The Trademarks Act, 1999 protects the well-known marks at two level, i.e., against the registration of any similar marks and against the misuse of well-known marks.
Rolex Sa v. Allex jewellery Pvt. Ltd. & Ors. (2009 (41) PTC 284 Del
In this case the plaintiff brought an action against the defendant so as to restrain them from dealing in artificial jewellery or in any product bearing the trade name ROLEX. In the said case the, Court while invoking Section Section 2(z) (g) was of the view that the segment of the public which uses the watches of the category/price range as the watches of ROLEX (plaintiff) is a well-known trademark. The said segment of the public if comes across jewellery/artificial jewellery also bearing the trademark ROLEX is likely to believe that the said jewellery had a connection to the plaintiff. The court considered the provisions of Section 11(6) of the Act and opined that “upon testing the trademark of the plaintiff on the touchstone of the ingredients of the said provision also, I find the said trademark of the plaintiff to be satisfying the test of the well-known trademark.”
Indian Shaving Products Ltd. v. Gift Pack and Anr. (1998) PTC 698 Del
The Delhi High Court passed the judgement in favour of the plaintiff. In the said case the factor determining the reputation of a mark under Section 11(6) i.e. the duration, extent and geographical area of any use of trademark was dealt with. The defendants in the case alleged that the plaintiff has used the trademark ULTRA for a very short period and hence could not have acquired the necessary goodwill and reputation during the said period. However, the court while determining the facts of the case observed that the plaintiff had achieved high sales and advertised heavily thereby eliminating the requirement of long duration of sale.
The observation of courts in various cases indicate that the Indian Judiciary has been flexible in interpreting the laws relating to well-known trademarks and has time and again considered factors like spillover effect, trans-border reputation, honest and concurrent use, extensive use and advertisement etc. for the purpose of according special treatment to well-known marks.