Protection of Well-known Trademarks

The protection of well-known trademark is the most difficult to obtain. This particular form of defence offers a multitude of benefits to its users. The power to restrict the registration and use of any identical or confusingly similar mark across any category or class of products and services under the Trade Marks Act, 1999 is the most essential advantage. This benefit can be obtained by filing an application. This advantage stands out as the most important one.

What is the Meaning of well-known Trademarks?

A trademark is a unique, creative, and meaningful sign, logo, or symbol used by an individual, company, or any other business to distinguish its products or services from others. It also gives the brand an identity. On the other hand, a well-known trademark is also a trademark, but the difference is that a well-known trademark indicates the higher value, goodwill, credit, and market credibility of the respective brand. A trademark becomes well-known based on its duration, market recognition, and geographical coverage; in other words, the number of people who know about the brand solely through its trademark. However, registering a well-known trademark is comparatively difficult, and requires a slightly different documentation process.

For instance, the use of the Coca-Cola trademark on steel or glass containers and on other such packaging signifies Coca-Cola’s popularity in the international market. The use of the Coca-Cola trademark or similar trademark is strictly prohibited.

Background of Well-known Trademark Protection

The notion of a "well-known trademark" was initially proposed in 1925 by The Hague Amendment to the Paris Convention, and it was not until much later that it was actually put into practice. Notably, at the time, the proviso only provided for the refusal or denial of registration of a trademark if the same trademark conflicted with a well-known trademark that was already in operation in the country.

This is significant because it shows that the proviso only provided for the refusal or denial of registration of a trademark. To reiterate, the instrument did not provide a definition for the phraseology; all it did was provide criteria for deciding whether or not a trademark is generally recognized.

The protection for a well-known mark vis-à-vis a trademark that is in dispute was strengthened as a result of the London Revision of the Convention in 1934 and the Lisbon Revision of the Convention in 1958. Both of these revisions took place in 1934 and 1958 respectively. It turned into an absolute necessity to have qualities such as unbroken usage, acclaimed goodwill, and so on. Because of this, the states who signed the agreement were required to intervene only in the case of allegations of unauthorised use of renowned trademarks on products that were the same as or comparable to those that were already on the market.

The Trade-Related Aspects of Intellectual Property Rights Agreement from 1994, which is more often referred to as the TRIPS Agreement, has a similar method. However, the rights for a well-known trademark have been expanded and allocated for services as well as goods. In addition to this, the TRIPS Agreement allowed for the possibility of the inclusion of other criteria, such as the knowledge of a "relevant portion of the public" and so on.

This basically meant that in order for a mark to be well-known, it did not necessarily need to be well-known to the whole public in order for it to be well-known to a certain set of persons.

In addition to this, the agreement stated that the protection afforded by a well-known trademark can also be called into play even when the goods and services in question are not comparable. This is provided that both of the conditions listed below are met, which are as follows −

• The use of such dissimilar goods or service would indicate a connection with the owner.

• The interests of the registered trademark owner are damaged. Because of this, there is no longer a requirement to strictly adhere to the concept of specialization.

In 1999, the assembly of the Paris Union and the World Intellectual Property Organization (WIPO) accept the joint recommendations regarding well-known trademarks.

Application for Well-known Trademark

An applicant can now submit an application for registration of a mark as a 'well-known' mark, which was previously only able to be adjudicated and granted through orders passed by the courts, the registrar, and the IPAB (which has since been eliminated) in the course of an infringement, opposition, or rectification proceeding. An applicant can now submit an application for registration of a mark as a 'well-known' mark. The Trade Mark Rules 2017 were revised earlier this year, which made it such that this could finally become a reality.

Conclusion

Likewise, a well-known trademark is a special recognition given to an individual or company because of having wider geographical reach and popularity among the people. Furthermore, there are international conventions and agreements, such as the Paris Convention and the TRIPS Agreement, which provide protection for well-known trademarks. These conventions and agreements provide for the recognition of well-known trademarks across borders, which helps to prevent unauthorized use of well-known trademarks in other countries.

However, if someone violates and infringes someone’s right by using their well-known trademark, then the trademark infringement lawsuits can be filed in the respective court. It involves filing a lawsuit against an individual or entity that is using a trademark without authorization, in order to stop them from using the trademark and to seek damages for any harm caused.

FAQs

Q1. What are the examples of well-known trademarks?

Ans. Following are some of the examples of well-known trademarks −

• Google

• Coca-Cola

• Apple

• Bose

• Walmart

• Reliance Jio

• Sony

• Vodafone, etc.

Q2. How to prove a well-known trademark?

Ans. Following are some of the ways to prove a mark as a well-known trademark −

• Evidence of extensive use

• Evidence of substantial sales and revenues

• Evidence of public recognition

• Evidence of international recognition

• Evidence of industry recognition

• Evidence of exclusive use

• Evidence of distinctiveness