“Imitation of the brand is a punishable offence”; have you ever noticed this notification on popular brands? Ever wondered the reason for such notifications? Below is a brief idea about well known trademarks and its infringement.
What is a well known mark?
A well-known trade mark is a popular mark, logo or a symbol that represents a brand and also its hard earned goodwill and reputation. A trademark becomes a well known mark depending on:
The degree of recognition it receives in the relevant sector;
The duration of recognition;
The extent & geographical area of recognition; and
The value associated with it.
For e.g. Coca-Cola, Pepsi, McDonald and Dominos etc. are popular brands that qualify as well known trademarks. This link provides a brief list of popular trademarks in India.
The statutory definition of a well-known mark is given in Section 2(1) (zg) of the Trade Marks Act, 1999;
“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.
The statutory definition simply states that if:
A trademark is recognized by a substantial segment of a population that uses the goods and services represented by the trademark; and
The use of the trademark by anybody in relation to other goods or services is perceived by the public as belonging to the proprietor of the mark
The trademark qualifies as a well known trademarks.
Why is a well known mark important?
The importance of a well-known trademark lies in the fact that they bring huge commercial value for the trademark owners. Registration and unauthorized use of such a trademark is infringement of the trademark. Unauthorized use of such mark creates confusion about the quality of product within the consumers and hence damages the reputation of the brand. Illegitimate imitation of trademarks is a punishable offence.
For example, if a garment manufacturer uses a well known trademark of which the company is not the original owner then it is a case of trademark infringement.
Protection of well known trademarks:
Protection from registration of the trademark by a third party.
Protection from misuse of the trademark.
A trademark is necessary for maintaining the goodwill and reputation of a company. In order to uphold the reputation and goodwill, trademark registration of the mark is very important. With the Madrid Protocol in place registration of a trademark is easier insofar as the international scenario is concerned. Registration protects well-known marks against infringement and dilution (i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others).
Case Study for Well Known Trademark Infringement
In the matter of Kamal trading Co. vs. Gillette UK Limited (1998 IPLR 135) injunction was sought against the defendants who were using the mark 7’O Clock on their toothbrushes. The Bombay High Court, which held that the plaintiff had acquired an extensive reputation all over the world including India by using the mark 7’O Clock on razors, shaving creams, as such it was a well known mark. The use of an identical mark by the defendant would lead to the customer being deceived. As such, the defendant was prohibited from using the mark.
To know more about how to protect trademark, please visit the post process of registering a trademark in India.