INDIA FOCUS Although the amended statute laid down
determining factors for the Registrar to consider, it does not specify the factors which the court needs to consider while determining whether a mark is well-known. Recently, the Delhi High Court in Tata Sons Ltd v Manoj Dodia and Ors discussed at length the factors for determining well-known marks. In this case, the conventional principle of likelihood of confusion was found to be inadequate by the court as a means of protecting well-known marks.
Te court observed that the owner of a well-known trademark may seek cancellation or prevent registration of a trademark which is the same or similar to the well-known mark, irrespective of whether the impugned mark is in relation to identical or similar goods or services, or in relation to other categories of goods or services. Te right holder may also prevent others from incorporating the well-known trademark as a part of corporate name/business names.
their
Even if a well-known trademark is not registered in India, its owner may avail itself of these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well- known mark is otherwise known to or recognised by the relevant section of public in India.
Te Delhi High Court in the above case stated that in the interest of foreign investment in India, foreign well-known marks should be protected.
“Our country is now almost in the league of advanced countries. More
and more foreign
companies are entering our markets, with latest products. Tey would be discouraged to enter our country to introduce newer products and make substantial investments here, if the courts do not grant adequate protection to their IP rights such as patents, trademarks and copyright. Most of the products sold by these companies are branded products, the marks on them having trans-border reputation and enjoying tremendous brand equity. It is, therefore, becoming increasingly necessary to curb such trademark piracies lest they drive away the huge foreign investment our country is attracting. Te court should not give premium to dishonesty and unfair practices by those who have no compunction in blatantly using the trademark of others for making unearned profits.”
Te above case law was again relied upon in the Toshiba case, in which the court held that the owner of a well-known mark is entitled in law to seek an injunction whether the use is in relation to the same or a different product.
Based on the fact that the Registrar has a statutory obligation to protect a well-known mark, while considering an application for registration the Trade Mark Registry now maintains a database on
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its official website of trademarks recognised as well- known marks. Tese marks have been determined to be well-known either by an Indian court or by the Registrar in any proceeding. Te list currently contains 54 marks, including well-known marks such as Intel, Mars, Horlicks, Pepsi, Glaxo, Pizza Hut, Red Bull and Yahoo, to name a few.
In relation to registration of celebrity marks, there have been few instances since the Daler Mehndi (a reputed singer) case, in which the defendant was guilty of passing off goods in the name of Daler Mehndi in order to obtain commercial gains while the plaintiff had garnered all rights, titles and interest, the right to publicity and the trademark ‘Daler Mehndi’. Te court granted a permanent injunction to the plaintiff.
In another case involving India’s most reputed movie actor Amitabh Bachhan and his actress wife Jaya Bachhan ( also a member of the Indian Senate), the court in Titan Industries Limited v Ramkumar Jewellers held that the plaintiff has the exclusive personality rights of Mr. and Mrs. Bachhan to advertise the famous jewellery mark ‘Tanishq’ in all forms of media. Te defendant,
World Intellectual Property Review September/October 2012
Mahua Roy Chowdhury is managing partner of Solomon & Roy. She can be contacted at:
mahua@solomonandroy.com
a jeweller himself, made an advertisement copying the plaintiffs’ mark and using the same image. Te court held that this amounted not only to copyright infringement but also to misappropriation of personality rights, as he had not sought the right to use their photograph.
“THE COURT SHOULD NOT GIVE PREMIUM TO DISHONESTY AND UNFAIR PRACTICES BY THOSE WHO HAVE NO COMPUNCTION IN BLATANTLY USING THE TRADEMARK OF OTHERS FOR MAKING UNEARNED PROFITS.”
In Jaitley v Network Solutions Private Limited, the defendant had registered the domain name ‘
arunjaitely.com’. Te plaintiff being an erstwhile minister of law and a leading member of a political party, had asked for the transfer of the domain name aſter the defendants attempted to auction it. Te courts held that well-known personalities need to have their names protected as they have established a mark for themselves even in the virtual world. As an eminent personality, Arun Jaitley falls within this purview.
A reputed celebrity chef, Sanjeev Kapoor, went further and registered variations of his photograph and images as trademarks. Many Indian celebrities, such as Sachin Tendulkar (cricketer), A.R. Rahman
(musician), Shah
Rukh Khan (movie actor), Kajol (movie actress), and Baba Ramdev (yoga guru), have registered/ applied for their personal name as a trademark.
All this demonstrates that besides protecting well- known trademarks, the Trade Mark Registry and courts have duly recognised celebrity rights.
Mahua Roy Chowdhury has more than 16 years’ experience as an advocate and patent attorney. She has coordinated more than 450 IP enforcement raids, advises and represents multinational brands in post-enforcement actions in criminal courts, and has resolved out of court disputes relating to trademarks, copyright and soſtware infringement.
www.worldipreview.com
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