Td.docx

NAME OF AUTHOR: Anamika Singh

INSTITUTION: Hidayatullah National Law University (HNLU) OCCUPATION: 3rd year BA LLB (Hons.) student CONTACT NO.: 7869024414 EMAIL ID: [email protected] ADDRESS: Opp. Netam Villa, Singh Shastralaya Road, Chaurasia Colony, Santoshi Nagar, Raipur(C.G.)

NAME OF C0-AUTHOR- Shivani Agrawal INSTITUTION: Hidayatullah National Law University (HNLU) OCCUPATION: 3rd year BA LLB (Hons.) student CONTACT NO: 9826172972 EMAIL ID: [email protected] ADDRESS: 19, Aishwariya Residency, Telibandha, G.E. Road, Raipur(C.G), 492001

NAME OF MANUSCRIPT Trademark a well known story

ABSTRACT Encircling the alleviating controversies in the intellectual property regime, Trade Mark Act can now been considered as one of the most controversial topic especially pertaining to recent changes brought in 2017. This article limits its ambit to well known trademark and recent changes brought in through the enforcement of The Trademark Rules, 2017. The main idea of the research paper is to accentuate upon the power granted to Registrar to determine the well known trademark, which might seem a boon for acquiring well known status as a matter of right, at first instance. This paper aims towards providing an overview of the resultants of the amendment in light of a string of relevant judgments. The main objective behind this is to evaluate the modifications made through Trade Mark (Amendment) Rules 2017 and to ascertain as to whether the Rule 124 incorporated in it runs parallel to the Section 11(6) and 11(9). It critically analyses the repugnant provisions in the act and the assistance of proposed amendments in strengthening the trademark and other marks related laws in India and whether they really contribute to ease of doing business. Whilst analyzing the provisions put forth in Trade Mark (Amendment) Rules 2107 it was concluded that the power to determine the well known trade mark vests not only with courts but also with Registry of trade mark. Hence there is a dire need that they must be extremely cautious and stringent while they ferret out well known status. Also, several factors must be taken into account as per Sec 11(6) before declaring a mark to be well-known trademark, lest we shall have a sudden string of well-known trademarks.

Introduction With Globalization achieving new bounds, restricting trade to domestic arena would be futile and adversary to economic growth. Formerly human race practiced barter system for carrying out trade, later the concept of currency was introduced but at that time, trade majorly constituted dealing with tangible goods. It was not until the 19th century that the term "intellectual property" began to be used, and not until the late 20th century that it became commonplace in the majority of the world. In the wake of ameliorating business standards certain developments in form of legislations dealing with patents, copyright, industrial design rights, trademarks, plant variety rights, trade dress, geographical indications, were made to regulate the intangible property. But with such developments, the avaricious motive of generating revenue by taking undue advantage, stealing the rights of others i.e. infringement of intellectual property rights followed as repercussions. Combating such deterrents of development have not only become a desire but also a necessity of this era. One such step regarding trademark was the enforcement of Trade Mark Act, 1999, keeping in mind the requirements enshrined in General Agreement on Trade and Tariff (GATT).1 The recent amendment is further an endeavor to augment the existing law relating to trademark, address various infringement issues, enable any person to obtain well known trademark status for his/her enterprise. Currently 81 marks have been positioned on the IP India website. Erstwhile the proprietor of a famous trade mark could only establish his mark as well known through judicial proceedings. Further adding a feather to its cap, this recent change has also led to promotion of certain initiatives of Government such as, ‘Ease of doing business in India’ and ‘Start up India’.2 One may question the authenticity of giving such wide discretionary power to the Registrar as this discussion is not so futile to be left unheeded.

Definition and Meaning

1

Moumita Roy, Law of Well-Known marks in India, GIP India, (Jan.19,2017,6:29 PM)http://www.gip-india.in/lawof-well-known-trademarks-in-india/ 2 Surbhi Pandey, Requirements to include a mark in the list of well known trademarks, Intespat IP Services, (Jan.19,2017,6:29 PM), https://www.intepat.com/blog/trademark/well-known-trademarks-india/

“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.”3 Hence one can comprehend that a well known trademark connotes years of meticulous work of a trader which enables him to earn reputation and goodwill which paves the way for greater revenue generation. It refers to a mark which has gained high popularity among a particular segment of society and a relation is created between regular user and producer.

Significance of well-known trademark The question which generally strikes to one’s mind while acquainting with the concept of well known trade mark is: what was the need for such a status? Wasn’t the Act already efficient enough for providing protection against infringement of trademark? A trader invests a huge amount of money to keep his intellectual property impervious from fraudulent and malicious opportunists who wait for an opportunity to fish out the revenue generating source through illegal means. With the enhancement in trade and subsequent transcending borders, the once local product and services has now acquired status of international commodity. With this newly gained global perspective, certain traders have achieved an indisputable degree of prestige among consumer which blazes the trail for their popularity, goodwill and hence greater revenue. At this juncture such a trader would never compromise with the security of his intellectual property and hence the need for determination of well-known trade mark emerged. A trade mark after getting identified as well known relieves the owner from his vigil against infringement of his rights. Following can be regarded as vital characteristics of well known trademarks: 

Well-known marks are generally protected, regardless to its registration or nonregistration, in respect of identical or similar goods or services.

3

Trade Mark Act, Section 2(1)(zg), (1999)



The holder of well-known trademark gets a negative right and hence can restrain all others from registration of identical, same or similar trademark belonging to similar goods or services. For this, registration in India is not a precondition.



The owner can prompt an injunction proceeding against others if they attempt to use the well-known trade mark for their enterprise’s name.



While under ordinary circumstances, there is a five year limit for bringing cancellation action against trademark registered in bad faith. No such limit is applicable for a wellknown trademark.



Generally larger awards are given in favor of well-known trade mark, in case of infringement and infringers are also subjected to severe punishments.4

Amendment Amendment 2017 of trademark Act can be certainly called a touchstone in history of this act because of the power conferring provisions contained in it. While at simple glimpse it might appear convincing as to now no more rigorous searches needs to be undertaken to ascertain whether a trade mark is well known or not, but such a glance should not lead to erroneous decision making. To elucidate this concept one need to understand the pros and cons of the same. Prior to amendment The determination of a trademark as “well known” was left at the discretion of the courts, the Intellectual Property Appellate Board and the Trade Marks Registry. With the advent of technological advancement the method of maintaining a list started, the acknowledgment of such a list was made for the first time in January 2011 after publication of the ‘hit list’ on the Official website. This list is duly updated as per decisions made by courts, tribunals in various proceedings. But before the dusk of era of technology, ascertaining the “well known” element of trade mark was a tedious task, since one had to scour through various judgments of the aforementioned

4

WIPO-World Intellectual property organization(Jan.19,2017,6:10PM), http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm

courts and authorities. Breaking the shackles of courts discretion, a silver lining was seen with the introduction of draft of the Trademark Amendment Rules in 2015 by the Controller of Patents, Designs and Trademarks. This draft proposed a provision for empowering the Registrar to review an application to recognize a trademark as a well-known trademark. This proposal was put forward for public opinion by a notice annexed along with it, inviting public comments on the proposal. After a span of two years finally the proposal was accepted and the Trade Act 1999 finally stood modified. Subsequent to amendment Marking a silver lining for prestigious brand owner the Controller of Patents, Designs and Trademarks published a draft of the Trademark Amendment Rules in 2015 with a proposal to empower the Registrar to review an application to recognize a trademark as a well-known trademark. And finally with the introduction of Trade mark (Amendment) Act 2017, on 6th March 2017 repealing the Trade Mark Rules, 2002, Rule 124 got incorporated which is a turning point in power regime of courts. As now the power vests with the Registrar as well to determine the “well-known” status of trademark. However, this amendment initially laid no guideline or procedure to be followed while determining well-known trademark. It was only when the controller issued a public notice entailing general guidelines for application, essential documents and general procedure to be followed.

Provisions relevant: Rule 124, 11(6), 11(7), 11(8), 11(9), 11(10) Rule 124 provides the mechanism which enables a person on payment of prescribed fee, to request Registrar for determination of Trade Mark as “Well-known trade mark”. Section 11(6) and Section 11(9) keeps a balance between the discretionary power of registrar and relevant factors which should be essentially considered before taking the decision. As per Section 11(6), following are considered relevant factors for declaration of Well-known trademark—

“(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognized as a well-known trade mark by any court or Registrar under that record.”5

Section 11(7) lays down the factors to e taken into account by the Registrar while determining as to whether a trade mark is known or recognized in a relevant section of the public— (i) the number of actual or potential consumers of the goods or services; (ii) the number of persons involved in the channels of distribution of the goods or services; (iii) the business circles dealing with the goods or services, to which that trade mark applies.6 Under provided Section 11 (8), where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.7 At the same time Section 11(9) specifies irrelevant considerations. Therefore the Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:— (i) that the trade mark has been used in India; (ii) that the trade mark has been registered; (iii) that the application for registration of the trade mark has been filed in India; 5

Trademark Act, Section 11(6) , (1999) Trademark Act ,Section 11(7), (1999) 7 Trademark Act, Section 11(8) , (1999) 6

(iv) that the trade mark— (a) is well known in; or (b) has been registered in; or (c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or (v) that the trade mark is well-known to the public at large in India.8

While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall, as per Section 11(10)— (i) protect a well-known trade mark against the identical or similar trade marks; (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.9

Form to be filled: TM-M This form mandates providing of an application number for declaration of trademark as wellknown, even though there are radio buttons to mention the registration of mark with the Trademark Registry, which, in such a case, would indicate that the provisions specified under Section 11(9) might basically be redundant and it would be impossible to get it registered as well-known trademark status unless an application is filed in India.10 Procedure to be followed: Step 1: Application to be filed under Rule 124 Form TM-M

8

Trademark Act ,Section 11(9), (1999) Trademark Act, Section 11(10), (1999) 10 Archana Priyadarshani, How to get a “well known” trademark status for your mark in India, Selvam & Selvam, (Jan.19, ,2017,6:23 PM), https://selvams.com/blog/get-well-known-trademark-status-mark-india/ 9

Step 2: A prescribed fee as per the first schedule (INR 100,000) to the Rules to be paid. It must be

filed

online

through

comprehensive

e-filing

services

on

the

official

website www.ipindia.nic.in. Step 3: Certain Documents needs to be attached as evidence. They must be in PDF format with resolution of 200 x 100 dpi on A4 size papers and should not exceed 10 MB Documents include: 

Statement of case which is sufficient to describe applicant rights and claim over trademark



Evidence indicating the use of the Trademark over a long period of time.



Other documents supporting its claims that the mark has a unique reputation in the minds of the consumers.



Evidence in support of such claim. It may include documents regarding -

Usage

-

application for registration or registration obtained if any

-

annual sales turnover,

-

publicity reach,

-

advertisement and expenses incurred for the same,

-

actual or potential customers,

-

evidence pointing to the recognition or knowledge of applicant mark in the relevant section of the public in India and abroad.



Evidence to strengthen enforcement of right like judgments that recognized the mark as well-known, copy of the judgments etc.

Step 4: Upload applications along with these documents Step 5: Registrar on receiving the application, after due consideration may publish the details of the mark proposed to be included.

Step 6: People who wish to object may file his objection in writing to the Registrar stating reasons for objection and evidence supporting the same. Step 7: If the officials find the mark worthy of being declared “well-known”, within stipulated time it would be notified in Trade Marks Journal and the official website. He may even substantiate his refusal with relative grounds for refusal of registration and/or call for further documents/evidences to reach a conclusion.11 If the mark is found to be obtained erroneously or in an unjust manner, included in list, it may be removed. But before such removal, the principle of “audi alteram partem” should be adhered to and only after appropriate opportunity of hearing is provided a decision in this regard is to be taken.12 Pros: 

Public opinion insures element of popularity as a pre-condition of well-known trade mark



No dependence on judgment to prove the well-known element.



Registrar is not fully at discretion to declare any trade mark as well-known according to his/her whims and fancies. He has to take public opinion into consideration and is also bound by provisions of Sections 11(6).



It promotes digitalization because filling of application and prescribed fee can be done only through online mode.



It avoids unnecessary delay unlike the previous procedure under which, one had to wait for an opposition, rectification or infringement proceeding to prompt adjudication on whether the trade mark is well- known.



There are high chances of removal of duplicate products from market.

Cons: 

Provision allowing ‘any entity’ to file an application has certainly opened a wide gate for corrupt practices.

11

Supra 2 Surbhi Pandey, Requirements to include a mark in the list of well known trademarks, Intespat IP Services, (Jan.19,2017,6:29 PM), https://www.intepat.com/blog/trademark/well-known-trademarks-india/ 12 The Trademark Rules, Rule 124 ,(2017)



This amendment gives arbitrary power to Trade Mark Registry.



Rule 124 does not explicitly specify a hearing in the provision of inviting objections.



Now recognition of trademark to public at large is not a condition precedent for determination of well-known status. Why should a trade mark be recognized as ‘wellknown’ in India if it not well known to the public at large?



Sec 11(6) states that “the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark”13 is a condition precedent. This defeats the elementary purpose of granting the well-known status. The preliminary need for such vast protection is that the mark has attained recognition amongst a large section of the public not just a “relevant section of the public”.

RELEVANT CASELAWS Christian louboutin v. Pawan kumar14 Facts of the case: Christian Louboutin is a footwear brand which originated in France in 1992, which has massive popularity in the domestic as well as international market because of the admiration received for being a luxury brand. It was listed first in Luxury Institute's Annual Luxury Brand Status Index (LBSI) for three years and was declared the Most Prestigious Women's Shoes for several years consecutively. The brand has a registered trademark of ‘Red Sole’ and is known for its distinct feature which is a red color that it puts in the outer sole of footwear that it manufactures. It gained glory worldwide and has usage across many countries including India, having its branches in Mumbai and the other in Delhi. The defendants are women footwear manufactures in Delhi. Defendant No. 1, Pawan Kumar is a sole proprietor of Defendant No. 2 and 3 which is ‘Kamal Family Footwear’ and ‘Kamal

13 14

The Trademark Act, Section 11(6)(i),(1999) Christian louboutin v. Pawan kumar MANU/DE/5180/2017

Footwear’ Karol Bagh, New Delhi. Defendant No. 4 is Vijay Kumar, who is the proprietor of the Defendant No.5 entity, namely ‘Adara Steps’, also located at Delhi. The plaintiff filed a case of permanent injunction against the defendants, accusing them of infringing its rights by using its trademark for their own shoes. The plaintiff provided various evidences including copies of its social media posts which clearly indicated the unlawful use of the trademark; proofs of its international recognition to establish their reputation of being wellknown. After scrutinizing all the evidences, court ruled in favor of the plaintiff and hence affirmed the infringement of their right. Court’s Findings: The court granted its order for permanent injunction on the use of plaintiff’s trademark by the defendants and observed that it is undisputed that the ‘Christian Louboutin’ is a well-known brand, internationally as well as in India. In its ex-parte judgment, the Court identified that apart from being a well-known mark, the company also enjoys trans-border reputation and it has the necessary goodwill to be recognized across the globe. Delhi High Court also substantiated its decision with reasons as to why it was considered a wellknown mark: “i. The plaintiff is well-known luxury brand with presence in over 60 countries including India: ii. The plaintiff has been using its ‘RED SOLE’ trademarks extensively and continuously since 1992; iii. The plaintiff’s ‘RED SOLE’ trademarks are known to customers throughout India; iv. The plaintiff is recognised as a sole licensor of the Christian Louboutin trademarks and has successfully enforced its rights in the said trademarks; v. The plaintiff has extensively promoted its luxury products under its Christian Louboutin trademarks including the ‘RED SOLE’ trademark in India; vi. The plaintiff has extensive presence over the Internet;

vii. The plaintiff’s website is accessible to consumers in India and have served in making customers in India aware of the plaintiff, the various luxury products of the plaintiff and the plaintiff’s well known trademarks including the ‘RED SOLE’ trademark. viii. The plaintiff has received various awards and accolades for the luxury products made available under the plaintiff’s well-known trademarks including the ‘RED SOLE’ trademark.”15

Analysis: This is a radical judgment given by the Delhi High Court as it clearly lays down the criteria and provides us with rough characteristics necessary for deciding the well known element of a trademark. More importantly, this judgment recognizes trans-border reputation as an important factor in deciding a well-known mark. It has to be noted that intellectual property rights are territorial in nature while trans-border reputation is global and this creates irregularity in many cases which has added to the ambiguity and skepticism in law. The judgment is also silent on how the evidence relates to the Section 11 (6) to (8) of the Trade Mark Act, 1999 and also fails in its reference to procedure provided in Section 124 of the new Trademark Rules, 2017.

N.R. Dongre and Ors. V. Whirlpool Corporation and Anr.16 Facts of the case: Whirlpool Corporation was a multinational company engaged in the selling and manufacturing of household appliances. It registered its trademark in India in 1956 concerning washing machines, dishwashers and other household appliances but its trademark lapsed in 1977 and it failed to renew. Whirlpool entered into collaboration with TVS Ltd. for trading in India and licensed its mark to them for selling the appliances. Thereafter, it became ‘TVS Whirlpool Ltd.’ Prior to this, it used to sell its products in the U.S Embassy in India. Sometime later, N. R Dongre tried to register a trademark by the name of ‘Whirlpool’ and the application was 15 16

Christian louboutin v. Pawan kumar MANU/DE/5180/2017, Paragraph 14 N.R. Dongre and Ors. V. Whirlpool Corporation and Anr. 1996 PTC (16) 583 (SC)

approved. When contested by TVS Whirlpool Ltd., the Registrar said that it lacked the necessary reputation and goodwill in India and that the use of the trademark by N.R Dongre would not create any confusion. Whirlpool filed an appeal in Delhi High Court and sought a permanent injunction against when Dongre was found to be selling inferior quality washing machines by the name of ‘Whirlpool’.

Court’s Findings: The Delhi High Court upheld the decision in favor of TVS Whirlpool and said that they were already engaged in selling their products to the U.S Embassy and they do have trans-border reputation in India by the way of commercial magazines etc. When a higher appeal was made by N.R Dongre in a special leave petition, the learned judge in Paragraph 19 said that, “Whirlpool associated with the plaintiff No. 1 was gaining reputation throughout the world. The reputation was traveling trans- border to India as well through commercial publicity made in magazines which are available in or brought in India. These magazines do have a circulation in the higher and upper middle income strata of Indian society. Washing machine is a household appliance used by the middle and upper clefs of the society. The plaintiff No. 1 can bank upon trans-border reputation of its product washing machine for the purpose of maintaining passing off action in India.”

Analysis: The court re-established the significance of trans-border goodwill and reputation and clarified the notion that international goodwill of a company or a brand cannot be ignored. It plays a crucial role in the field of trademark rights to help them secure protection under the law in case of any violation.

Brahmos Aerospace Pvt. Ltd. V. FIIT JEE Limited And Ors.17

Facts of the case: Brahmos Aerospace Pvt. Ltd., a governmental company set up by Ministry of Defense of India with shareholding of DRDO also, filed a case of injunction against FIIT JEE, an institute offering training for competitive exams to students for the use of its trademark. FIIT JEE came up with a course called ‘Brahmos’ which provided education to students who desired to seek admission in America. While Brahmos Aerospace Pvt. Ltd. also provided educational services and training to engineers relating to aerospace. Brahmos Aerospace Pvt. Ltd. claimed that they had already registered this mark, which was of their own ingenuity by combining the name of two rivers. Not only that, they should also be receiving the advantage of ‘Brahmos’ being a well-known trademark because of it being the recipient of several awards and its worldwide popularity and goodwill. FIIT JEE put forth the argument that the name was neither unique nor distinctive but just another form of the word ‘Brahmin’. It was also said that Brahmos’ main occupation was of an aerospace industry and thus the goods of unrelated matter cannot be protected. Moreover, the aerospace company did not refer its educational services as ‘Brahmos’. They were of the view that their use was not causing an infringement of their rights because the main trade-name they occupied was FIITJEE.

Court’s findings: The court, on prima facie evidence decided that ‘Brahmos’ is a well-known, registered trademark of the plaintiffs and the opposite party caused an infringement of its trademark rights. The court gave its opinion that the contention of the defendant that the main trademark of the defendants was FIITJEE does not have any ground and looking at its advertisements, it was clear that there was an intention to take advantage of the formers’ reputation in the market.

17

Brahmos Aerospace Pvt. Ltd. V. FIIT JEE Limited And Ors MANU/DE/0384/2017

Analysis Reliance was placed on previous cases to establish that in case of a well-known trademark, the usage of a mark even in dissimilar goods will also constitute an infringement of rights.

Toyota Jidosha Kabushiki Kaisha V. Prius Auto Industries Ltd. And Ors.18

Facts of the case: The appellant who is an automobile manufacturer based in Japan, filed a suit of injunction against the respondents who manufactures spare parts of automobiles, for the infringement of its trademark rights. The main contention of the appellant was that the trademarks, 'Toyota', 'Toyota Innova', 'Toyota Device' and the mark 'Prius' was its own and the respondents had been using the same. It was found that the first two trademarks were registered trademarks of Toyota but ‘Prius’ was not. The respondents claimed that it had registered the mark back in 2002 when it began using it and hence it has a legal right over it. Whereas, the appellants had no registration of ‘Prius’ but enforced its right by putting forth the contention that they had been using it since 1997 and the respondents had wrongfully registered it in India and thus they had the right of ‘passing off’ of the same.

Court’s findings: The Court passed a judgment in favor of the respondents and said that the appellants had not yet established the reputation pertaining to ‘Prius’ which is necessary for ‘passing off’. Although Indian law identifies trans-border reputation but it still has to establish its reputation in India to reap the benefits of well-known trademark. In other words it was laid down that apart from international fame, local recognition is also important. 18

Toyota Jidosha Kabushiki Kaisha V. Prius Auto Industries Ltd. And Ors.MANU/SC/1619/2017

Analysis: This is one of the most significant and recent case concerning trademark law in India. In this case the Supreme Court gave a progressive judgment restating the nature of IP rights whereby, it reaffirmed that IP rights are territorial in nature and not global. The judgment given in this case reasserts the principle that Intellectual Property Rights are at its base territorial in nature and although they are given recognition globally, the local goodwill of the commodity also has to be established. The Court gave a very noteworthy judgment which holds value for the future disputes.

Tata Sons Limited V. Ram Niwas And Ors.19

Tata has on various occasions in the past filed a suit against parties for infringement of its trademark rights. In the case of Tata Sons Ltd. v. Mr. Md. Jawed & Anr.20, the court gave a pronouncement that TATA is a household name and the dilution of a well-known mark by passing off a product of the same name of an inferior product is an infringement of the former’s rights.

Facts of the case: In the present case the accused filed an order of permanent injunction for the use and misuse of TATA’s name. The accused has a transport business dealing with packaging, storage of goods and transport arrangements. They took up a similar name called ‘TATA packers and movers’ and created a site called ‘www.tatapackers.com’.

19 20

Tata Sons Limited V. Ram Niwas And Ors MANU/DE/3397/2016 Tata Sons Ltd. v. Mr. Md. Jawed & Anr. CS(OS)Nos.264/2008 & 232/2009

Court’s findings: The court decreed its order in favor of the plaintiff as it found that they had a registered trademark under the category of ‘Transport, packaging and storage’ under Class 39 and that the defendants have blatantly violated their IP rights.

Daimler Benz Aktiegesellschaft & Anr. V. Hybo Hindustan21

Facts of the case: The famous German automobile producer, Mercedes Benz filed a case of injunction against a company manufacturing underwear by the name “Benz” and contained a human being making three pointed star as its logo. The plaintiff was aggrieved of the wrongful use of its name and its logo which was of a three pointed star.

Court’s Findings: The court gave the order restraining the defendants to use the mark and said that the dilution of such a luxury brand in the field of automobile is wrongful and not permissible. It also observed following, “I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of the “Mercedes Benz”, its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs – not available to any person to apply upon anything or goods. That name which is well known in India and worldwide, with respect to cars, as is its symbol a three pointed star.”

21

Daimler Benz Aktiegesellschaft & Anr. V. Hybo Hindustan AIR 1994 Del 239

CONSTITUTIONALITY Creating a lot of buzz in the intellectual property regime, this new amendment has also raised a very crucial question regarding its constitutionality. Mooting over this scenario is not uncalled for since these changes are at some point in conflict with the Trade Mark Act 1999. In common parlance rules which are delegated legislation, draw their legitimacy from the principal statute. Similarly the Trade Mark Rules, 2017 should draw its legitimacy from the Trade Marks Act, 1999. But Rule 124 goes against Section 11 which provides for the procedure for recognition of a well-known trade mark. However, one can counter this by saying that Section 157 elucidates the rule making power of the Central Government under the Trade Marks Act. However the act of 1999 is totally silent on the issue of well known trademarks. There is a residuary provision under Section 157(xli) that empowers the Central Government to make rules for “any other matter which is required to be or may be prescribed”. Like all other provisions this is still bound by the two most vital principles: First, being that delegated legislation must not encroach upon the provisions of the parent legislation. And secondly, an essential legislative function cannot be delegated by Parliament to the Executive. But this new rule denies both these principles and reflects totally new criteria to grant well known status unlike the previous procedure that followed adversarial proceedings.22 Also the power given to Registrar should not be undermined, as now the chances of increased corruption is very high. Furthermore there is no explicit mention of a hearing in the provision inviting objections in Rule 124. Apart from this, the procedure clearly states that the evidence for the well-known status may include ‘applications for registration or registration obtained if any’. An existing application must be either registered or pending for registration. This indirectly implies that for acquiring well known status, one can’t file a new application as a well-known mark but rather an existing one has to be included, which conspicuously goes against section 11(9) of the Act.

Prashant Reddy, The ‘Well Known’ Trademark under the New Trade Mark Rules, 2017: Is the New Procedure Constitutional?, Spicy IP(Jan.19, ,2017,6:15 PM), https://spicyip.com/2017/04/the-well-known-trademark-underthe-new-trade-mark-rules-2017-is-the-new-procedure-constitutional.html 22

Furthermore, the requirement to “invite objection” is quite different from an opposition or rectification hearing because it does not guarantee a right to be heard. Lastly, the entire point of providing vast protection to well-known trademark is its popularity. But Section 11(6)(i) directly infracts on allowing trademark recognized only in the “relevant section of the public” and not society at large. Conclusion Pondering over the need of the hour to simplify the procedure of acquiring the well known status, a new idea of providing this status as a right rather than a mere privilege bobbed up through the new Trade mark rule 2017, yet the persistence of certain loopholes are undeniable. These rules surely provide an easier way of getting identification of well known trademark but the procedure as contained in rules nowhere provides for any caution, if any malice is applied in acquiring it. An attempt has been made to point a very crucial fact that a perturbing issue of the amount of arbitrary power which the Trade Mark Registry currently holds should not be ignored. A corrupt or biased decision by the Trade Mark Registry would enable an infringing mark to make space for itself on the list. As a matter of fact there is a dire need for the Registry to be extremely cautious, stringent and must look into several factors before declaring a mark to be well-known trademark. These rules acclaim the strengthening of trademark rules and hence providing for the ease of doing business. On one hand this paper applauds the efforts taken to remove the discrepancies and making the procedure lucid and easy and there on the other, it also attempts to bring forth the possible repercussions of concentration of power.