WELL-KNOWN TRADEMARKS
minds of US consumers through online channels and develop a fame that may not require bricks-and-mortar stores, but when attempting to achieve well-known status, foreign companies have struggled. “I don’t enjoy going on the record saying this,
but I think there is a prejudice against foreign brands at the USPTO in attempting to register well-known status,” LaBarge says.
India In 1999, India adopted the Trade Marks Act as part of its own process of harmonising domestic law with
In 2013, the Intellectual Property Appellate
Board dealt with appeals from both applicants, before falling on the side of Nestlé aſter having recognised its use of the mark outside India from as early as 1935. Nestlé also supplied further evidence of invoices and export sales, which made a convincing argument that more people associate ‘Kit Kat’ with the Swiss chocolatier than with the food company Kolkata. In February 2014, Microsoſt, represented by
the World Trade
Organization’s TRIPS Agreement. Under the act, trademark owners are able to attain well- known status without having to register their rights with the Indian Trade Marks Registry. It also gives them grounds to oppose trademark registrations that may confuse consumers with their well-known status. But it has not always been a smooth ride for
established brands. In 1987, Nestlé’s application to register ‘Kit Kat’ as a trademark was rejected by the Trade Marks Registry. Shortly aſterwards, a food company called Kolkata attempted to register ‘Kit Kat’ as well, but this was also rejected.
law firm Anand & Anand, was granted well- known status in India following a trademark dispute with Kurapati Venkata Jagdeesh Babu. In order to persuade Judge Manmohan Singh, Microsoſt submitted detailed invoices and Whois records of its domain names containing the name Microsoſt. Singh said: “It is the case of the plaintiffs ‘Microsoſt’ is well known and enjoys
that
a stellar reputation all across the world. Terefore, if that segment of the public which uses the products/services/domain name of the plaintiff under the well known trademark ‘Microsoſt’ comes across similar products/ services/domain name bearing the trademark ‘Microsoſt’,
it is likely to believe that the
“IF THE COMPANY HASN’T BEEN AROUND FOR MORE THAN A YEAR THEN YOU MIGHT FIND IT TOO HARD TO ESTABLISH YOURSELF IN THE EYES
28 World Intellectual Property Review May/June 2015
www.worldipreview.com
hor Jorgen Udvang /
Shutterstock.com
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