INDIA FOCUS: WELL-KNOWN TRADEMARKS
“IT WILL BE A GREAT PERVERSION OF THE LAW RELATING TO TRADEMARKS AND DESIGNS, IF A MARK OF THE ORDER OF MERCEDES-BENZ IS HUMBLED BY INDISCRIMINATE COLOURABLE IMITATION.”
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.”
It does not envisage whether registration of an identical or similar mark will cause or is likely to cause confusion with, or deception to, an earlier trademark. Te main consideration is whether the earlier trademark is “well-known” and whether use of a later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Section 11(8) says: “Where a trademark 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 trademark as a well- known trademark for registration under this Act.”
In the case of Canon Kabushiki Kaisha v Registrar, 2009 (39) PTC530, the Intellectual Property Appellate Board (IPAB) allowed an appeal against the Registrar’s order dismissing the opposition to an application for ‘Canon’ in Class 16 for geometrical boxes, mathematical instruments, drawing sets and stationery.
IPAB considered the similarity of the marks, and that the main part of the appellants’ trade name was ‘Canon’. Te appellants’ trademark ‘Canon’ was registered in India in various classes. Te IPAB held that ‘Canon’ is a well-known trademark.
Tere is no legal ruling as to what is “the relevant public” in determining the knowledge, recognition or fame of a mark. Registrars and the IPAB use the expressions “marks with a reputation”, “reputed trademarks”,
“famous mark”, and “well-known mark”. Clarity in the use of such expressions is needed. A registrar taking quasi-judicial notice of
of
the public, which includes the likelihood of association with the earlier trademark.”
Te expression “on the part of the public” is not clarified. “Earlier trademark” in the explanation means “a trademark which on the date of the application for registration of
question, or where appropriate, of
the trademark in the priority
claimed in respect of the application, was entitled to protection as a well-known trademark”.
Section 11(2) of the Indian Trademarks Act 1999 provides: “(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 trademark is registered in the name of a different proprietor, shall not be
Te defendants had adopted the ‘Disney’ mark and characters for bicycles.
Te court held that the plaintiff’s trademarks were well-known marks and entitled for protection in all classes of goods. Damages were awarded with an injunction.
Protection was given to the well-known mark ‘Mercedes-Benz’ on non-competing goods. Te defendant sold underwear for men with the representation of a man with his legs separated and hands joined together above his shoulders, within a circle, to indicate a strong suggestion of a link to the three-pointed star of the Mercedes-Benz car.
Te judge used caustic words: “I think it will be a great perversion of the law relating to trademarks and designs, if a mark of the order of Mercedes- Benz 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 any thing or goods. Tat name, which is well known in India and worldwide with respect to cars has as its symbol a three-pointed star.”
In India even if a mark is not registered criminal proceedings can be taken against those who use false trademarks/false trade descriptions. A person convicted for shopliſting four pairs of socks goes to jail for six months. However, in a matter where predators earn millions by wrongful imitations they go scot free!
“marks with a great reputation”,
WIPR is sad to report that Tehemtan N. Daruwalla passed away on August 13. Condolences should be directed to
jgbdadvo@gmail.com.
the
reputation of the trademark ‘Anacin’ held: “I am a quasi judicial official of 55 years of age with a rural background, I am aware of Anacin from my childhood. I knew Anacin as a headache treatment. It was generally available in a small grocery/general store of the village. It was popular and known to the public in general including illiterates, women, and servants as a medicine for headache. ‘Anacin’ is declared a well-known trademark.”
In Disney Enterprises, Inc v Rajesh Bharti & Ors, 2013 (54) PTC372(Del.) the plaintiff sued the defendants to restrain a product bearing a word mark or character device similar to the plaintiff’s registered trademarks ‘Mickey Mouse’ and ‘Disney’, also alleging passing off. Te plaintiff proved trademark registrations in India and 58 countries.
52 World Intellectual Property Review September/October 2013
Tehemtan N. Daruwalla was an advocate
and solicitor, registered patent,
trademark and geographical agent. He was a founder member and former president of the Indian AIPPI national group and former president of
the Intellectual Property Law Practitioners Association of India.
www.worldipreview.com
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