Protection of well-known Marks Under The Trademarks Act

Introduction

While there have been other decisions issued under the Protection of well-known Marks Under The Trademarks Act, the case law discussed above remains the most significant and most relied upon in later decisions. As can be seen from the discussion above, Indian courts have applied passing-off principles to reach findings of dilution, which is an act of unfair competition. In addition to dilution of goodwill and reputation, most cases also placed reliance on the elements of confusion and deception to find in favour of the plaintiff.

It is interesting that under Section 47 of The Trademarks Act itself there is no reference to dilution of a mark’s distinctiveness; rather, express reference is made to the challenged use on dissimilar goods being “taken as indicating a connection in the course of trade between those goods and a person entitled to use the trademark in relation to the first-mentioned goods.”

In other words, the reference is to consumer confusion and deception caused by the defendant’s use perhaps, this explains the courts’ need to rely on consumer confusion and deception while finding in favour of the plaintiff. With the exception of the Mercedes Benz case[1], all the other cases relied on the elements of confusion and deception caused to consumers by the defendants’ offending use, apart from the dilution caused by the harm to the mark’s reputation.

It is also of significance that under The Trademarks Act, there would be no standing for an infringement action unless the well-known mark had a defensive registration in the class of goods for which the defendant chose to use the mark.

However, the remedy of passing off was still available to an aggrieved trademark owner even in the absence of a defensive registration. All the cases discussed above were either appeal from the Trade Marks Office’s orders in opposition proceedings or passing-off court actions.

When the TM Act became effective in September 2003, the protection of well-known marks acquired a new hue in India. The Trademarks Act contains essentially five provisions referring to well-known marks, namely, Sections 2(1)(zg), 11(2), 11(6), 11(7), and 11(9)[2].

Also, under Section 29(4) [3] of The Trademarks Act, dealing with trademark infringement, there is a specific provision to protect registered trademarks that have “a reputation in India” against third-party use in connection with dissimilar goods and services. It is instructive to take a closer look at these provisions to understand their judicial interpretation under The Trademarks Act. To begin with, these provisions raise issues about the definition of well-known marks.

In defining a “well-known mark,” Section 2(1)(zg) uses, in part, language that is closely similar to that used by Section 47 of The Trademarks Act to outline the parameters for defensive registration of a well-known mark.

The gist of Section 2(1)(zg) lies in the portion dealing with the use of a plaintiff’s mark in connection with other goods or services that 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.”

Sections 11(6), (7), and (9) of The Trademarks Act provide certain guidelines to the Registrar of Trade Marks for deciding whether or not a mark is well-known.

However, while Section 11(2) of The Trademarks Act, dealing with relative grounds of refusal of trademark registration, provides that a trademark that is identical or similar to a “well-known marks” cannot be registered for dissimilar goods or services, its counterpart under Section 29(4), dealing with trademark infringement, does not mention “well-known marks” and merely refers to a mark having “a reputation in India.”

Could it have been the intention of the legislature to protect well-known marks only at the stage of registration? If not, why is there a discrepancy in the respective language used in Sections 11(2) and 29(4)? It is useful to review the case law that has been evolving under these sections to see how the courts have been dealing with these discrepancies.

Case Laws

1. The Hamdard Case [4]

The first of these cases is a suit for passing off and infringement filed before The High Court of Delhi. The plaintiff, in this case, owned the mark HAMDARD accompanied by an eye design, used in connection with the practice and manufacture of Unani medicines, a form of alternative medicine in India since 1906. The plaintiff’s complaint alleged that the defendants were using the plaintiff’s well-known mark HAMDARD for Basmati rice in Class 30.

The plaintiff argued that the trade channels of the respective products overlapped because the plaintiff also sold beverages under the mark HAMDARD, hence the defendants’ use created a likelihood of confusion and deception. Infringement of the mark under Section 29(4) of The Trademarks Act was also specifically pleaded. The defendants opposed the lawsuit on various grounds, inter alia, dissimilar products, and bona fide adoption.

In finding trademark infringement under Section 29(4) of The Trademarks Act, The High Court relied on several cases discussed above, namely, the decisions in Bata, Caltex, and Honda, in addition to considering case law on this point from the United States and Canada.

In particular, the Court considered the decision of the Canadian Supreme Court in the case Mattel, Inc. v. 3894207 Canada Inc [5], and that of the United States Supreme Court in Moseley, Victor’s Little Secret, Petitioners v. V Secret Catalogue, Inc [6].

The Canadian Supreme Court in Mattel rejected opposition to the use and registration of BARBIE in connection with restaurant services. In doing so, it reasoned that the mere fact that a mark was famous did not entitle its owner to a monopoly in connection with unrelated products and services.

The Canadian court went on to affirm that there should be certain objective markers, which the “famous” mark must satisfy if the monopoly is to be granted. These should regard, for example, the inherent distinctiveness of the mark and the extent to which it has become known; the duration of the trademark use; the nature of the goods and the trade; and the degree of resemblance between the respective marks.

The U.S. Supreme Court, in Moseley, reviewed a Court of Appeal’s order holding that the mark VICTORIA’S SECRET was distinctive and that the evidence established dilution even though no actual harm had been proved. The U.S. Federal Trademark Dilution Act (FTDA) [7] defines “dilution” as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”

Reversing the concurrent findings of the district court and the court of appeals, the U.S. Supreme Court held that the standard contemplated by the U.S. Lanham Act[8] was not “likelihood” of dilution, but “actual” dilution. The consequence of the Supreme Court judgment was a swift congressional intervention by amendment to the Trademark Dilution Revision Act (TDRA) [9] (effective October 6, 2006), by which the standard of “likelihood of dilution” was affirmed.

The amendment provided, inter alia, that the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

The High Court of Delhi considered the recent trends in Canada and the pre-2006 decisions in the United States that showed that the mere advertence to the existence of a famous mark, by itself, was insufficient to guarantee an injunctive relief. Courts, particularly in Canada, had insisted on the plaintiff establishing the injurious association, in the case of dissimilar goods. The goods[10] are to some extent dissimilar; yet there is the likelihood of confusion or deception, on account of overlapping trade channels.

The plaintiff’s argument that both its goods and those of the defendant can be purchased from the same traders, cannot be brushed aside. If this is taken together with the fact that the plaintiff’s Hamdard brand is also hosting to an entire range of food products such as soft drink concentrates and recipes, like RoohAfza, etc, which are sold commonly across the country, even in grocery or small departmental and utility stores, which also sell food grains, the plaintiff’s apprehensions are not fanciful.

In these circumstances, the court is of the opinion that the plaintiff has been able to establish, prima facie, that though the goods are dissimilar, the degree of resemblance and nature of products is such that the defendants’ goods are likely to be confused with that of those of the plaintiffs, and the latter is likely to suffer from such injurious association.

The High Court, therefore, held that the standard for deciding what amounted to trademark infringement in connection with dissimilar goods and products was “likelihood of deception.” In order to interpret the parameters set forth by Section 29(4) of The Trademarks Act, namely, taking unfair advantage of the senior mark and causing detriment to the senior mark, the High Court of Delhi chose to take into account U.S. case law on dilution and came to the conclusion discussed above.

It is particularly notable that in the language of Section 29(4) there is no indication that the test for infringement in the case of dissimilar goods is “likelihood of deception.”

2. The Ford Case [11]

This case came on appeal before the Division Bench of the High Court of Delhi from an order of the Single Judge granting the defendants’ motion to dismiss the plaintiff’s complaint. The defendants filed their motion on several grounds, alleging inter alia that the defendants were not subject to the jurisdiction of the High Court of Delhi, that there was no infringement, and that the plaintiff’s complaint did not state a claim for which relief could be granted.

The order of the Single Judge contained observations about the merit of the plaintiff’s case under Section 29(4) of The Trademarks Act to the effect that the very purpose of a single-class trademark registration was to reserve the opportunity for registration in other classes.

Further, the Single Judge held that if the legislature intended that once a trademark was registered only in one class of goods, the same trademark could not be used by any other person for any other class, then there would have been no classification of goods under the TM Act.

The facts of the case revolved around the defendant’s use of the mark FORD in connection with footwear, which was objected to by the plaintiff in the suit before the Single Judge. The plaintiff’s infringement case rested on Section 29(4) of the TM Act[12]. Allowing the appeal and remanding the suit to the Single Judge, the Division Bench issued the following decision bearing on Section 29(4) of the TM Act: The learned Single Judge has opined that the primary objective of the Act is to restrict protection to trademarks in respect of the Class under which it has been applied and registered.

The view of the learned Single Judge is that the intendment of the Act could not be for blanket protection to be made available to a trademark in respect of the entire gamut of Classes. What should not be lost sight of is the fact that Section 29(4) is palpably an exception to the scheme of the Act and applies only to those trademarks which have earned a reputation in India.

If it is, prima facie, clear or it is proved through evidence that the concerned trademark enjoys and commands a reputation in India, the Plaintiffs do not have to prove deception on the part of the Defendants or likelihood of the customer being misled because of the use of the challenged trademark. Once the Plaintiffs have made out a case that the offending trademark is identical with or similar to its registered trademark, relief would be available even if the purveyed goods are not similar and/or fall in the same category or class.

Comparing this holding with that in the Hamdard [13] case discussed above, the difference in opinion between the courts on the requirement of actual deception in these cases is noteworthy. While in Hamdard the Court held that the test for infringement in the case of dissimilar goods is “likelihood of deception,” in this case the Court goes by the letter of Section 29(4) and finds that if the mark enjoys a reputation in India, the plaintiff does not have to prove the defendant’s deception.

3. The Welcome group Case [14]

ITC Limited (ITC), one of the largest private-sector companies in India, locked horns with Philip Morris Products SA (Philips Morris) before the High Court of Delhi over Philip Morris’s use of a roof design logo containing the inverted letter “M.” The respective logos are depicted below: The lawsuit was sparked by the alleged similarity between the two logos and was based on ITC’s claim that the M logo of Philip Morris had the effect of blurring the distinctiveness of ITC’s W Namaste logo, which ITC had been using for 34 years.

Specifically, ITC alleged that the use of the M logo by the defendant breached Section 29(4) of the TM Act. While plenty of evidence of use of its W-NAMASTE logo in the hospitality and restaurant businesses was made of record by ITC, there was no evidence of use of this logo in connection with cigarettes. The defendant primarily argued that while the W-NAMASTE logo was registered for cigarettes in Class 34, there had been no use in connection with these goods by the plaintiff.

In fact, the defendant argued that all of the plaintiff’s cigarettes were sold under several other brand names without the use of the W-NAMASTE logo. The defendant also pointed out the relatively inconspicuous use of this logo compared with the use of the house mark of the plaintiff and other plaintiff’s registered marks, as well as other evidence filed by the plaintiff, arguing that the only reason for the plaintiff’s suit was to kill the defendant’s competition because the consumers who bought the defendant’s cigarettes were rather discerning as a result of the market placement and price range of its products.

After hearing lengthy arguments, the High Court of Delhi declined the plaintiff’s request for preliminary injunction and noted that even assuming that the plaintiff proved similarity of the two marks and associated reputation, the record evidence showed that ITC’s W-NAMASTE logo was associated mainly with the hospitality and restaurant sector and that such reputation could not possibly transcend the hospitality business.

There was nothing to suggest that such association extended to mid- or high-priced cigarettes. The High Court considered this element to be crucial because the plaintiff did not deny selling cigarettes, although under different brands without the logo in question. Therefore, it found no connection between the defendant’s mark and the plaintiff’s services that could cause harm to the plaintiff or undue advantage to the defendant. The Court held that this Court[15] is of opinion that the test here (for dilution) is not exactly the same.

For one, Parliament has consciously eschewed the “deceptively” similar standard—which is defined by Section 2, in relation to infringement claims under Section 29(4).

This would mean that the identity or similarity standard is a notch higher—the claimant has to prove or establish that the two marks are identical with or similar to each other. The question of deception does not arise here. There must be a near identification of the two marks or they must have the closest similarity.

The second aspect is that the other elements necessary to establish dilution—dissimilarity of goods, the claimant mark having a reputation in India; the use of the mark without due cause, resulting in detriment to it, or the defendant taking undue advantage, have to be established. These ingredients are all to be established, as the conjunctive “and” is used, in Section 29(4).

The plaintiff appealed before the Division Bench of the High Court of Delhi; however, it was not successful in reversing the findings. While this holding correctly analyzes the requirements under Section 29(4), it is interesting that the opinion was written by the same Judge who issued the decision in the Hamdard case [16] discussed above. While in Hamdard the test for infringement in the case of dissimilar goods was found to be “likelihood of deception,” this decision steers clear of the requirement of deception in such circumstances.

4. The Raymond Case[17]

Although this case went up to the Supreme Court of India, the findings pertaining to Section 29(4) of the TM Act that merit discussion are found in the order of the Division Bench of the High Court of Bombay, which will be reviewed here. The plaintiff’s mark RAYMOND is a popular Indian brand of men’s formal wear, both for ready-made suits and suit fabrics.

The plaintiff’s complaint before the Single Judge and on appeal before the Division Bench was that the defendant, a pharmaceutical company, used the plaintiff’s registered trademark RAYMOND as part of the defendant’s corporate name, allegedly amounting to infringement under Section 29(4).

While rejecting the plaintiff’s claim, the Single Judge held that the use of the mark RAYMOND by the defendant appeared quite appropriate for a company that manufactured medicinal products and that it was unimaginable how the defendant, by using this mark in its corporate name, could take unfair advantage of [the third condition under Subsection (4) of Section 29 of the TM Act] the plaintiff’s mark, which was used for entirely different products.

It further held that from the consumer’s perspective, there could be no association between the parties’ respective products because the two marks were available through different trade channels. On appeal, the Division Bench deemed the plaintiff’s case to fall under Subsection (5) of Section 29 of the TM Act, holding that this subsection precludes the applicability of Subsection (4) when a defendant has adopted a plaintiff’s registered trademark as its trade name or corporate name.

Section 29(5) of the TM Act reads: Section 29(5)–A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.

On further appeal, the Supreme Court declined to interfere with the order of the Division Bench and remanded the Single Judge to decide the case within nine months without regard to the Division Bench’s findings. Needless to say, by refusing to go into the merits of the case, the Supreme Court missed an apt opportunity to settle the confusion over the discrepancy between “well-known marks” and marks having “a reputation in India” under the TM Act.

Two of the main issues raised by the plaintiff for consideration by the Supreme Court were

(a) whether Section 29(5) of the TM Act precludes a court from examining the claim of infringement of a registered trademark having a reputation in India as described under Section 29(4), if such infringement arises from the unauthorized use of such trademark as a trading name in respect of dissimilar goods or services; and

(b) whether the reference in Section 29(4) to a “registered trademark” that “has a reputation in India” means “well-known trademark” as defined under Section 2(1)(zg) of the TM Act, and meets the parameters set forth in Sections 11(6) and 11(7) of the TM Act?

The effect of the Division Bench decision in Raymond is that, in a situation where a registered well-known mark is adopted as a trading name or a corporate name by a defendant in connection with dissimilar goods, a plaintiff would not be able to rely on the wider protection offered under Section 29(4), which protects well-known marks against use on dissimilar goods. Rather, such a plaintiff would have to rely on the narrower protection offered under

Section 29(5). Because Subsection (5) deals only with infringement of an identical registered mark for identical goods or services, the only remedy available to a plaintiff in the case of a defendant’s use of a plaintiff’s mark in a trading name or corporate name in connection with dissimilar goods would be a passing-off action. In short, the findings of the Division Bench, in this case, offered well-known marks much more limited protection than that previously available even under the old TMM Act in the form of defensive registration.

It would have been important indeed for the Supreme Court to settle this issue especially in view of the limited application of Subsection (5) of Section 29 to identical marks and identical goods or services while deciding infringement in the context of the use of a plaintiff’s mark as part of a defendant’s trade name or corporate name.

It could not have been the intention of the legislature to encompass under Subsection (5) of Section 29 situations of infringement of trademarks having a reputation when adopted as trade names or corporate names for dissimilar goods, especially because there is a specific provision under Subsection (4) to protect such marks.

Further, Section 11(2), which deals with the relative grounds of refusal of registration, provides that a trademark that is identical or similar to a “well-known mark” cannot be registered for dissimilar goods or services, while its counterpart under Subsection (4) of Section 29, dealing with infringement, does not refer to “well-known” marks.

The Supreme Court ought to have noticed this discrepancy and settled this issue as well, in view of the fact that the reference to a “registered trademark” that “has a reputation in India” under Subsection (4) of Section 29 is very vague when a “well-known mark” is specifically defined under the Act. Would it not have been more appropriate to use the expression “well-known mark” in Section 29(4)? Because one of the specific objectives of the TM Act was to codify the protection of well-known marks, could the legislature have intended different degrees and standards for the purposes of registration as opposed to using of well-known marks?

5. The Noddy Case [18]

Decided by the High Court of Delhi, this case involved the trademark rights in the famous character “Noddy,” a little wooden boy with a jingly blue hat who lived in Toy Land, created by Enid Blyton in the late 1940s. The plaintiff was the owner of the mark NODDY and the character’s image. It sued a local defendant for infringement of its trademark rights in the well-known mark NODDY, which the defendant was using for low-quality readymade apparel for children.

The plaintiff alleged that the defendant’s products targeted little children who read the plaintiff’s books. It was not disputed that in 2000, the plaintiff had opposed the defendant’s trademark application for the mark NODDY in Class 25; that despite the opposition proceedings, the mark mistakenly proceeded to registration; and that the plaintiff had made continuous efforts to revive the opposition at the Indian Trade Marks Registry. However, despite having known about the defendant’s application since 2000, the plaintiff never approached the Court to seek injunctive relief.

While the plaintiff proved high sales volume in India and abroad between 2002 and 2008, it failed to establish the use of the mark prior to 1995, the year the defendant was granted registration and commenced its use of the disputed mark. Giving particular weight to the plaintiff’s lack of trademark use in India prior to 2002 and its uncharacteristic lack of vigor in pursuing the defendant’s disputed use (of which the plaintiff was aware since 2000), the Court found against the plaintiff [19]

The plaintiff has not adduced any evidence to show the prior user in India, it is even not the prior registered owner of the said trademark in India. A claim of dilution cannot sustain against a registered owner of the trademark, as is clear from Section 29(4). In this case, the defendant has not only established prior user, at least from 1995 but also prior registration of the mark.

While it may be true that some sections of the public, especially those exposed to a certain kind of education, and having access to imported books were aware of Noddy and were reading about his escapades in Toyland, so vividly created by Enid Blyton, (the author of this judgment being one such) and even retaining fond memories, yet the Court is not unmindful of the fact that there is not even a shred of evidence disclosing sales figures, as to the importation of such books, authorized stockists, periodicity of such sales, advertisements, areas where such sales took place, and their volume, etc.

While the Court’s remarks concerning the legal propriety under the TM Act of a registered trademark owner’s infringement action against another owner cannot be faulted, this decision raises two pertinent questions for well-known marks. The first of these is whether it is correct to require prior use in India by the plaintiff—ironically, the Judge acknowledged the fame of the mark in stating that he himself was, as a child, an ardent young fan of the books by Enid Blyton, featuring “Noddy,” but then went on to hold against the plaintiff on the basis of lack of use in India.

The law on prior use in India today provides that the first party to use the mark in the world market would be regarded as the first user of the mark in India [20].

In this connection, it is also relevant to note that Section 11(9) of the TM Act quoted above, dealing with relative grounds of refusal of an application, provides that use of a mark in India is not a factor the Registrar of Trade Marks is required to consider while determining whether or not a mark is well known.

Secondly, the Court’s failure to analyze the reasons for the defendant’s adoption of the mark NODDY is rather disconcerting. Why would a defendant choose a mark such as NODDY, which is neither a surname nor a word in any Indian language, to describe its business for children’s apparel if not to target children who read the plaintiff’s books or watch the plaintiff’s cartoons?

Conclusion & Suggestions

When a mark is recognized as a well-known mark, the range of protection is very broad, extending to dissimilar goods and services. Hence, such protection often gives rise to the criticism that the owners of well-known marks are reaping where they have not sown. Without the assistance of a set of objective parameters, it would, therefore, be arbitrary or impossible to reach a conclusion that a particular mark is a well-known mark.

Even with a set of well-established parameters for well-known marks, the courts might have to take into account other considerations to reach a decision, and the requirement that each individual case should be judged based on its own facts is stipulated even in the WIPO Joint Resolution on well-known marks mentioned above. Prior to 2003, courts dealing with passing-off actions concerning well-known marks relied on confusion and deception with some notable exceptions to find dilution.

With the codification of the law governing well-known marks into the TM Act, Indian case law took a new turn. Until then, the principles of passing off were applied in these cases for determining the rights of the parties. Aside from fleeting references to the harm that could be caused to a mark’s reputation, in most of the cases decided under the old law, heavy reliance was placed on a defendant’s misrepresentation and the ensuing confusion and deception.

The test set forth by Section 29(4) of the TM Act, on the other hand, requires three cumulative conditions to be met, namely that

1. The disputed mark is identical with or similar to the registered trademark;
2. The disputed mark is used in connection with goods or services that are not similar to those for which the registered trademark is registered, and
3. The registered trademark has a reputation in India and the use of the disputed mark is without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

While it is not difficult to determine whether the first two conditions are met, a set of guidelines would have made determining the third condition less complicated. In the absence of guidelines and constrained by the subjectivity of the language in the third condition, namely, “the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark,” courts have been looking elsewhere for guidance.

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BIBLIOGRAPHY:

Books referred:

1. Banerjee Soumya, Transborder Reputation, Journal of Intellectual Property rights,11(4)(2006)274-279

2. Bansal Ashwani Kumar, Law of Trademarks in India(CLIPTRADE Publishers, New Delhi),2006.p.322,683

3. Kanth D Ravi, India to sign Trademark Protection Treaty, Business Standard,17 June 2010; Available here

4. Johnson Phillip, in Trademark law and sharing names: Exploring the use of the same mark by multiple undertakings, edited by FhimaIllanah Simon (Edward Elgar Publishers, USA),2009,p.40,4B

5. Journal of Intellectual property rights vol 15, July 2010, pp 293-301

6. Read David Vaver, “Intellectual Property law: State of the Art” 116 LQR 621 at 636(2000)

7. Ralph S. Brown, Jr.,” Advertising and the Public interest: Legal Protection of Trade Symbols”,57 Yale LJ 1165 at 1206 (1948)

8. Mark A Lemley, “ The Modern Lanham Act and the death of common sense” 108 Yale LJ 1687 at 1695 (1999)

9.F.Schechter, “ Rational Basis of Trademark Protection” 40 Harv L Rev 813 (1927)

10. Frederick W.Mostert, Famous and well-known marks 4(Butterworths,1997)

11. Kazel Carty, “Dilution and passing off: cause for concern” 112 LQR 632 at 655

12. Michael Blakeney, “ Well-known marks” 16 EIPR 481 at 484 (1994)

Websites referred:

www.ipindia.nic.in/

www.ipmetrix.in/blog/

www.ipaustralia.gov.au/

www.wipo.int/trademarks/en

[1] See Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan [AIR 1994 Del.239].

[2]Section 2(1)(zg) states: “well-known trademark,” in relation to any goods or service, 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.”

Section 11. Relative grounds for refusal of registration11(2)–A trademark which—(a) is identical with or similar to an earlier trademark; and(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.

11(6)–The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including—

(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark. (ii) the duration, extent, and geographical area of any use of that trademark.

(iii) the duration, extent, and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies.

(iv) the duration and geographical area of any registration of or any publication for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark.

(v) the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court on Registrar under that record.

11(7) – The Registrar shall, while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account:

(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 trademark applies.11(9) – The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:-

(i) that the trademark has been used in India;

(ii) that the trademark has been registered;

(iii) That the application for registration of the trademark has been filed in India;

(iv) That the trademark—

1. Is well known in; or
2. Has been registered in; or
3. In respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trademark is well-known to the public at large in India

Section 29 – Infringement of registered trademarks 29(4) – A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which –

(a) is identical with or similar to the registered trademark; and

(b) is used in relation to goods or services which are not similar to those for which the trademark is registered; and

(c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.

[3] Section 29 – Infringement of registered trademarks

[4] Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)].

[5] [2006] 1 S.C.R. 772.

[6] Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003).

[7] Federal Trademark Dilution Act of 1995 (FTDA), 15 U.S.C. § 1125(c), repealed by TDRA

[8] U.S. Trademark (Lanham) Act of 1946, Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified as amended at 15 U.S.C. §§ 1051-1129).

[9] The Trademark Dilution Revision Act of 2006 (TDRA), 15 U.S.C. § 1125(c).

[10] See Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)] at ¶ 29.

[11] Ford Motor Co. &Anr. v. Mrs. C R Borman & Anr. [2008 (2) CTMR 474 (Delhi) (DB)].

[12] Id. at 483.

[13] See Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)].

[14] ITC Ltd. v. Philip Morris Products SA & Ors [2010 (42) PTC 572 (Del.)].

[15] See id. at 601.

[16] See Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)].

[17] Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd. [2010 (44) PTC 25 (Bom.)(DB)].

[18] Chorion Rights Ltd. v. Ishan Apparel & Ors [2010 (43) PTC 616 (Del.)].

[19] See id. at 624.

[20] See Milmet Oftho Industries & Ors v. Allergen Inc. (2004) 12 SCC 624, 628.

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