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How to Recognize Well-Known Trademarks in India

10

APR

2020

How To Recognize Well-Known Trademarks In India

Well-known Trademark plays an important role in global markets and in identifying symbols and sign that are widely known to the significant general public and enjoys a fairly high reputation. The first time Well-Known trademark was discussed was in the Paris Convention of Industrial property in 1883, wherein the said convention set out certain guidelines for protection of well-known trademark but they did not lay down any procedure per se and hence left it to the signatory countries to make their own rules and regulations for registration of such marks. All the countries globally have accepted the significance of Well-known Trademark including India.

India has given well-known Trademark exceptional rights over registration of identical or deceptively similar marks and also against their abuse. The law makers in India have made specific provisions for safeguarding the Well- known trademarks in the Trademark Act of 1999 and the Trademark Rules of 2017, as earlier the well- known trademarks were protected under Common law from where the passing off was formulated. Well known trademark is defined under the Trademark Act, 1999 (‘the Act’) as

“in relation to any goods or services, 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.”[1]

India has been protecting well-known trademarks from a very long time and before having it defined under the Trademark Act of 1999, India was following common law to protect the same. The Trade and Merchandise Marks Act, 1958 did not provide for any specific provisions under which Well-Known Trademarks was defined, and it was only protected under passing-off. Furthermore, there have been judgments by various High Courts in India, which provided for protection of the same:

There are many cases In India for protection of Well-known Trademark and one of the most famous cases was of Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan[2]. In this case, the Plaintiff was a manufacturer of Mercedes Benz cars, and the Defendant was using the mark BENZ for selling its undergarments. The Court in deciding the case acknowledged the logo of the plaintiff as a well-known trademark and hence restrained the Defendant from using the impugned mark by stating that there was no valid reason as to why the defendant would adopt the name “Benz”, which is associated with one of the finest engineered cars in the world and has a trans-border reputation and goodwill.

In another case of Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors.[3], the Plaintiff filed a case against the defendants who were dealing with artificial jewellery, and using the trade name “Rolex” associated with the plaintiff. The court held that the plaintiff’s trade mark was a well-known trademark since the general public using watches recognize the trade name Rolex and the defendant using the same name for dealing with artificial jewellery would create confusion in the minds of the general public and might create an assumption that the products are those of the plaintiff company. Hence, the court granted injunction against the use of the trade name Rolex by the defendants.

In Microsoft Corporation v Kurapati Venkata Jagdeesh Babu,[4] the Delhi High Court held that the mark MICROSOFT was a well-known mark since it is being used and known to most of the public throughout the world, while also considering extensive evidence in relation to advertising and publicity for the mark in India. The court held that the defendants were not allowed to use the same mark “either as a trademark or part of its trading style/corporate name in relation to similar or dissimilar business as the said trademark has got a unique goodwill and reputation”.

PROCEDURE OF REGISTRATION

Before the new Trademark Rules of 2017 came into force, the Registry had made a list of well-known Trademark and uploaded on the website of Trademark Registry, but after the New Rules were introduced in 2017 March for registration of well- known trademark, the registration has to be done by filing an application online to register mark as Well- Known mark. These New Rules help in determining and declaration of Well-known Trademark.

  1. To determine whether the mark is Well- known or not, the registry will consider following things[5]:
  1. That the general public has knowledge about the said mark and are able to recognize the alleged well known mark and the recognition obtained by way of promotions.
  2. The duration, extent and geographical area of any use or promotion of that trademark.
  3. The record of successful enforcements 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 or Registrar under that record.
  4. The number of actual or potential consumers of the goods or services.
  5. The number of persons involved in the channels of distribution of the goods or services.
  6. The business circle dealing with the goods and devices to which the trademark applies.
  7. Wherein 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.

Section 11 of the Trademark Act, 1999 provides protection of Well- Known Trade mark and protection for the marks which are registered in good faith.

  1. Filing a Mark as Well- know Trademark in India

According to Rule 124 of the Trademark Rules, any person can apply for Registration of Well- Know Trademark. But there are certain steps which need to be followed for filing a mark as Well-Known Trademark:

  1. Form TM – M- : For getting mark registered as Well- Known Trademark one need to file Form an application on the form TM-M.
  2. The prescribed fee as per the first schedule of the rules in Form TM- M is Rs. 1,00,000/-.
  3. That the Application will be filed online through the e-filing services of the trademark made available at official website i.e. www.ipindia.niin
  4. Furthermore, there are certain documents which need to be filed along with the form[6]
  1. Statement of case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark,
  2. Evidence in support of the applicant’s rights and claim viz. evidence as to use of trademark, any applications for registration made or registration obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred therefore, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad, o
  3. Details of successful enforcement of rights, if any, relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks,
  4. Copy of the Judgment of any court in India or Registrar of Trademarks, if any, wherein the trademark is determined as well-known trademark,
  5. The size of the document submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
  1. After the submission of the form, the office will consider on the basis of the documents submitted. It may or may not be considered by the Registry.
  2. If accepted, then said mark will be added in the list of Well- Known Trademark.
  3. If one objects for inclusion of a particular Trademark in the list of Well- Known Trademark then they can file objection to the Registry of Trademark by stating its reasons for objection.
  4. Copy of such objection will be given to the Applicant and they can file counter statement for such objections within stipulated time.
  5. That after seeing both the side of the parties the final decisions will be given.
  6. If the Applicant mark is included in the list of well- known trademark the same shall be informed to the Applicant.
  7. Same shall also be informed to the Trade mark Journal and the mark shall be included in the list of well- known Trademark, will also be available on the website.

LIST OF WELL- KNOWN TRADEMARKS IN INDIA

The list of well-known trademarks in India is being regularly updated and is available on the website of the Registry.
There are about 97 Well- Known Trademark, as per the list updated by the registry[7]. However, there are numerous trademark applications that are pending before the Registry, which are yet to be declared as well-known trademarks in India. The list of the existing well-known trademarks in India is mentioned in the table below:

Serial No.

Trademark

Proprietor

Determining Authority

Report

Observation

1

7 O'CLOCK for shaving razors

Gillette U.K. Ltd., England

Bombay High Court

1998 PTC 288 DB

It is recognized that trade mark 70'Clock is well known. As such the use of the mark in respect of tooth brush will lead to passing-off.

2

AIWA

Sony Corpn., Japan

TMR, Chennai

Decision dated 26-09-2007

AIWA is a well-known trade mark in India in respect of electronic goods. Use of this mark without due cause for any other products would be likely to deceive or cause confusion, unfair advantage and be detrimental to the distinctive character and repute of mark.

3

BAJAJ

Bajaj Electrical Limited

High Court, Bombay

AIR 1988 BOM-167

The use of a family name Bajaj by defendants was held to be an act of passing-off. The goodwill and reputation of Plaintiff company was recognized.

4

BATA & BATA FOAM for footwear

Bata India Ltd.

Allahabad High Court

AIR 1985 ALLAHABAD 242

The plaintiff company Enjoy a reputation for its products.

5

BENZ

Daimler Benz

High Court Delhi

1994 PTC 287

Reputation extends worldwide.

6

BISLERI

Acqua Minerals Ltd.,

High Court of Delhi

2001 PTC 619

BISLERI is well-known in the Indian market and one of the first marks introduced for bottled mineral water. The defendant who was held to have adopted the domain name Bisleri with the intention to trade on the plaintiffs reputation and goodwill, was restrained.

7

CARREFOUR

Carrefour Society Anonyme, organized under the laws of France

High Court of Madras

2007 (35) PTC 225

The trade mark /name used by the applicant for 47 years throughout the world has to be protected, in order to promote commercial morality and discourage unethical.trade practices. Plea of well-known trade mark is accepted.

8

CARTIER for wide variety of goods including jewellery,watches, perfumes etc.

Cartier International, B.V, Netherlands

High Court, Delhi.

2003(26) PTC 160(Del)

Trade Mark Cartier in respect of various consumer goods have acquired a reputation for quality not only in India, but throughout the world. Plaintiff company has acquired brand image and personality in respect of their products. Permanent injunction granted.

9

CATERPILLAR

Caterpillar Inc., USA

Madras High Court (DB)

1998IPLR 326

Name Caterpillar in respect of heavy vehicles and the name has earned reputation & goodwill world wide.

10

CHARLIE

Revlon Inc.

High Court of Delhi

1997 PTC 394

Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.

11

DR.REDDY In respect of pharmaceutical products.

Dr.Reddy Laboratories

High Court, Delhi.

2004 (29) PTC 435

Trade Mark PR.REDDY, in spite of not being registered, has acquired considerable trade reputation and goodwill in the community dealing with drugs and pharmaceuticals not only in India, but abroad also.

12

DUNHILL

Alfred Dunhill Limited, U.K.

High Court of Delhi.

1999 PTC 294

Plaintiff has prima-facie established a distinctive reputation, image and goodwill in the trade mark and trade name DUNHILL. Plaintiff has acquired global reputation.

13

ENFIELD BULLET

Enfield India Ltd.

IPAB

2006(32) PTC 397

BULLET is a well known trade mark. It cannot be permitted to be copied even in respect of different goods. Appeals against Registrar's decision allowed.

14

EVIAN Mineral Water

Society Anonyme Des Eavx Minerals 'D' Evian

Delhi High Court

1993 PTC 103

Evian acquired excellent reputation and goodwill world over. Said reputation and goodwill extended to India. Mark acquired high degree of distinctiveness. Para 3 & 4 exparte order.

15

FEDDERS For air conditioners

Fedders North America

High Court, Delhi

2006(32) PTC 573

Defendants cannot be permitted to cash in on the international reputation of the plaintiffs. Injunction granted.

16

Whirlpool

Whirlpool Corporation,USA

High Court, Delhi

1996 PTC 476

A product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge or the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed Injunction granted.

17

GLAXO

Glaxo India Ltd.

High Court, Delhi

2002 (25) PTC 105

GLAXO is an invented word. By original adoption, registration, long and continuous user, plaintiff alone is entitled for the exclusive use of the trade mark GLAXO and no one else.

18

HAYWARDS 5000 For alcoholic

Shaw Wallace & Co. Ltd.

High Court, Delhi

2003 (27) PTC 63

The defendants used.numeral 5000 in respect o$3e*r to cash in on vide reputation and goodwill butf. ovet the years by the plaintiffs. Interim injunction confirmed.

19

HOLIDAY INN

Holiday Inn Inc.

High Court, Delhi.

2002(25) PTC 308 (DB)

Words HOLIDAY INN have been adopted by appellant to ride on global reputation of the respondent Commercial goodwill and global reputation should W be allowed to be exploited in a clandestine marine -. Appeals dismissed.

20

HONDA

Honda Motor Co. Ltd.

WIPO Arbritation & Mediation Centre

2004(28) PTC 332

Trade Mark HONDA is famous around the globe.

21

HONDA For motor cycles, motor cars etc.

Honda Motors Company Ltd.

High Court, Delhi.

2003 (26) PTC1

Plaintiffs business is of international character and reputation .Trade mark Honda has a global reputation.

22

HORLICKS For food products, malted biscuits, toffees.See also similar case

Horlicks Limited.

High Court, Delhi

2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241

Suits for injunction filed against various companies by the plaintiffs, injunction orders have beer passed and most of the suits have been decreed in"0VQur of the plaintiffs. (Under Section 11(6) record of the successful enforcement of the rights in that traifi nwks is a relevant consideration) Use of mark by the defendant 'is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.

23

Hamdard

Hamdard National Foundation (Hamdard Davakhana)

High Court of Delhi

2008 (38) PTC 109

The defendant took a calculated risk in using the HAMDARD word and eye mark; indeed its use of the eye mark points to an attempt to "free ride" on the plaintiffs reputation.

24

INTIMATE

Revlon Inc.

High Court of Delhi

1997 PTC 394

Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.

25

Infosys

Infosys Technologies Ltd.

High Court of Delhi

2007 (34) PTC 178

The owners has established expenditure of 392 crores towards sales promotion marketing expenses and brand building during 2004-05 alone. It has established an enviable reputation and goodwill in the market nationally and international level.

26

Intel

Intel Corporation

High Court of Delhi

2007 (34) PTC 492

Famous and well-known trademarks especially those that embody a reputation of pre-eminent excellence and quality, as plaintiffs Intel trademark, are required to be given a broad protection.

27

KANGARO

Kangaroo Industries

District Court of Central Jakarta

2004 (29) PTC 175

Mark declared as well known mark.

28

KIT KAT

Societe Des Produits Nestle,S.A.,1800 Vevey,Canton of Vaud,Switzerland.

IPAB

Judgement in TA/1/2007/TM/DEL/(C.M.(M)) No. 148 of 2002) dt. 11/12/2009

KIT KAT is a Well-known having trans-border reputation.

29

LETTER*T IN A CIRCLE House mark

Tata Engineering & Locomotive Co. Ltd.

IPAB

2006 (32) PTC 296

Respondents who have established their reputation and goodwill in automobiles and several other goods are entitled to have the trade mark safeguarded. BENZ case applied.

30

Logo *M' in the distinctive style and design of the famous golden arches

McDonald's Corporation, U.S.A.

High Court of Karnataka.

1999 PTC 9

The Logo 'M' is a well-known and famous logo and courts have recognized the existence of trans-border reputation.

31

MAHINDRA; MAHINDRA & MAHINDRA; M & M

Mahindra & Mahindra Ltd.

Supreme Court

2002 (24) PTC 121; CS (OS) 921/2013; Suit No. 2061 of 2012

Mark is in use for five decades. The name has acquired a distinctive secondary meaning in the business or trade circles

32

MARS for chocolates, confectionery etc.

Mars Incorporate,USA

High Court, Delhi

2003(26) PTC 241(Del) 2002(25) PTC 504 2003 (26) PTC 241

Use of mark by the defendant 'is a flagrant and blatant attempt to imitate plaintiffs r.itfrk.

33

NIRMA See also Sl.No.32

Shantaben 1 Karasanbhai Patel and Others

High Court of Delhi

2001 PTC 427

NIRMA is an invented word. It has acquired great reputation. The owners have been spending huge amount on advertisement for their trade mark. Their sales in relation to various goods are mounting every year.

34

NIRMA for washing & cleaning preparations

S.K.Patel

IPAB

2004(29) PTC 634

The principle laid down by various courts was applied namely where a regd. Trade mark has got reputation & goodwill they cannot be permitted to be used by another person even in respect of different goods.

35

NIVEA

Beiersdorf A.G.

High Court Delhi

2009 (39)PTC 38

Nivea is a recognized product of high quality and has international reputation and recognization. These are marks where the line between the goods and the name is blurred. The mark starts to represent the source or the person than merely a particular are specific type of goods or services. .

36

ODONIL & ODOMOS For mosquito repellants

Balsara Hygiene Products.

High Court, Madras (DB)

2004(29) PTC 226

Plaintiff has built up reputation in the mark, goodwill & huge sales turnover.

37

OMEGA

Omega S.A.,Bienne,Switzerland

High Court, Madras

2003 27 PTC 327

The Plaintiff company has been using the trade name OMEGA for more than 50 years and has enjoyed reputation for its products.

38

PANADOL & PANADOL EXTRA

SmithKline Beecham Pic.

High Court of Delhi

2001 PTC 321

Defendants deliberately used Plaintiffs well known mark.

39

PEPSI

Pepsi Inc.

RTM, Kolkata

2006(32) PTC 225

Pepsi enjoys a huge reputation and goodwill not only in India but also internationally .

40

PHILIPS

Philips NV Netherlands

Punjab & Haryana High Court

AIR 1983 P&H418

Is a household mark and has acquired enviable reputation in India and throughout the world.

41

PIZZA HUT Logo in respect business relating to restaurants

Pizza Hut International LLC, USA

High Court, Bombay

2003(26) PTC 208(Bom)

Plaintiffs enjoy a worldwide reputation, including in India. It is settled law that if the marks/logos enjoy a trans border reputation, they are entitled to be protected against infringement and passing off in India.

42

PLAYBOY for magazine and several other goods

Playboy Enterprises Inc.,

High Court of Delhi

2001 PTC 328

Plaintiff has demonstrated its strength due to the degree of distinctiveness, fame and reputation of the trade mark Playboy. The trade mark acquired world wide circulation and publication in as many as 16 foreign countries.

43

RED BULL

Red Bull GmbH

WIPO

2003(27) PTC 164

Trade Mark RED BULL is one of the best known trade marks not only in Austria but all over the world. Registration of domain name by the respondents was held to be in bad faith.

44

REVLON

Revlon Inc.

High Court of Delhi

1997 PTC 394

Defendants intention was fraudulent and dishonest to encash upon reputation and goodwill of products of plaintiff. Injunction granted.

45

TACO BELL for Restaurant business

Taco Bell Corporation,USA

High Court, Bombay

2000 PTC (20) 554

Plaintiff operated over 6000 restaurant worldwide using name taco bell as logo. Mark registered in more than 70 countries including India in classes 29 & 30. Defendants intention was to trade upon the famous mark of the plaintiffs.'

46

TATA SEE also TATA CASE

Tata Chemicals Limited

High Court, Delhi WIPO

2003 (27) PTC 422 2004 (29) PTC 522 (Delhi) 2001(21) PTC 129 2009 (40) PTC 54

The trade mark TATA is a household name in respect of various products all over India.TATA is a household word in India and solely and exclusively associated with the House of Tata.TATA is a well known mark.In the decision list of cases where enforcement of rights have succeeded is given.

47

TELCO

Tata Engineering and Locomotive Co. Ltd.,

TMR Chennai

2001 PTC 562

TELCO mark has gained transborder reputation and goodwill. The mark is identified with the owners and their products throughout India as well as various countries in the world.

48

TOSHIBA

Toshiba Corporation,Japan.

TMR, Ahmedabad

2005 (30) PTC 188

TOSHIBA held as a well known mark and registration cannot be rectified for non-use.

49

USHA For sewing machines, electric fans etc.

Not given

IPAB

2004(29) PTC 647

The respondent had built up long reputation and goodwill in India as well as abroad. The same cannot be permitted to be benefited by the appellant in respect of different goods or by different architecture or design.

50

VICKS VAPO RUB

Richardson Vicks Inc.

High Court, Delhi

1990 PTC 16

Prima facie the mark as well as bottles distinctive labels and metal containers have become well known and acquired a great reputation (para 32).

51

VOLVO for automobiles

Aktiebolaget Volvo

High Court (DB) Bombay

1998 PTC (18) 47

Trans-border reputation is recognized by Indian courts and that actual sale in India is not necessary for a Plaintiff to establish its goodwill and reputation in India.

52

KIRLOSKAR

Kirloskar Proprietory Limited

High Court, Bombay

AIR 1996 BOM-149

The mark KIRLOSKAR used by the plaintiff had acquired a secondary meaning and had become a household word.

53

WOOLWORTH In respect of clothing etc

F.W.Woolwor th Company

IPAB

2004 (29) PTC 477

Trans-border reputation enjoyed by the mark WOOLWORTH is not something to be not taken account of. The world wide reputation of the mark was recognized.

54

Yahoo

Yahoo, Inc.

High Court of Delhi

1999 PTC 201

The services of the Plaintiff under the Trade Mark/Domain name 'Yahoo' have been widely publicized and written about globally.

55

Polo (label with device of polo player)

POLO/LAUREN COMPANY IP (USA)

High Court of Delhi

Decision dated 19.12.2011 in CS(OS) 1763/2005

Having regard to the evidence placed on record the plaintiff has established that the registered trademark of the plaintiff is a well-known mark as defined in Section 2 (z) (g) of the Trade Marks Act

56

GE Monogram

General Electric Company (USA)

High Court of Delhi

Decision dated 21.12.2011 in CS(OS) 1284/2006

It can hardly be disputed that GENERAL ELECTRIC as well as GE whether written in plain letters or in a stylized form such as monogram are well known marks of the plaintiff within the meaning of Section 2 (z) (g) of the Trade Marks Act

57

KALPATARU

Kalpataru Properties Private Limited, Santacruz Mumbai

Bombay High Court

Suit No 2976 of 2010 decided on 29th July 2011

"The Plaintiffs have thus established that .'Kalpataru' is a well known mark " ."I have held above the plaintiff's mark "KALPATARU" to be a well known mark"

58

Castrol

Castrol Limited

Delhi High Court

Judgement in Suit No. CS(OS) 1369/2006 Decision dated 18/08/2011

High court observed CASTROL is a well known Trade Mark within the meaning of Sec. 2(1) (zg) read with Sec. 11(6) of TM Act 1999.

59

Lupin

Lupin Limited

Bombay High Court

Judgement in Suit (L) No. 3137/2011 Decision dated 05/12/2011

The High Court observed Lupin, a Well Known Trade mark.

60

Canon

Canon Kabushiki Kaisha, Japan

IPAB

Order in OA/43/2005

The Appellate Board Concluded that CANON mark is a well known term under Sec. 11(10) of TM Act 1999.

61

Microsoft

Microsoft Corp.

Delhi High Court

Judgement in Suit No. CS(OS) 2163/2010 order dated 03/02/2014

Court has specifically determined that Microsoft is a well-known trademarks and it is known to the most of the people.

62

Nestle

Societe des produits Nestle S.A.

Delhi High Court

Judgement in Suit No. CS(OS) 551/2010 dated 08/03/2013

Court has specifically determined that Nestle is a well-known trademarks

63

BBC

British Broadcasting Corporation

High Court, Delhi

CS (OS) 1171/2007

Hon’ble Court has determined the mark as a well-known in Indian Territory in its observation

64

Dupont

E. I. du Pont de Nemours and Company

High Court, Delhi

CS (OS) 2998/2012

Hon’ble Court has determined the mark as a well-known in its observation

65

Candid

Glenmark Pharmaceuticals Ltd.

High Court, Mumbai

Suit No. 182/2013

Hon’ble Court has determined the mark as a well-known in its observation

66

AMUL

Kaira District Co-Operative Milk Producers Union Lld.

IPAB

OA/56/2011/TM/KOL

The IPAB Emphasised AMUL as a well-Known Trademark.

67

Rajnigandha

Dharmpal Satyapal Ltd.

High Court, Delhi

CS (OS) 381/2012

Hon’ble court observed that Plaintiff has established the mark as a well known trademark.

68

Louis Vuitton

Louis Vuitton Malletier

High Court, Delhi

CS (OS) 270/2014 and CS (OS) 90/2006

Hon’ble Court has determined the mark known in Indian Territory in its observation

69

GOOGLE

Google Inc.

High Court, Delhi

CS(OS) 317/2011 ; CS(OS) 2907/2011

The Court has observed Google worldwide reputation and provided the relief on this basis only.

70

HAVELLS

Havells India Limited

High Court of Delhi

CS(OS) 3770/2014

The Court accepted Havells a well known TM

71

BLOOMBERG

Bloomberg Finance, LP

High Court of Delhi

CS(OS) No. 2963/2012

Interim Order was passed in favour and same was confined vide order dated 12/02/2014 in which HC Observed Bloomberg as well-known.

72

JOHN DEERE

M/s Deere & Co. Ltd.

High Court of Delhi,

CS (OS) 3760/2014

The Court observed John Deere a well known TM (para 13 of order dated 05/03/2015).

73

RAYMOND

M/s Raymond Ltd.

IPAB

OA/16-17/2010/TM/CH

The IPAB observed this mark as Well-known TM.

74

FERRERO ROCHER

M/s Ferrero Spa

High Court of Delhi

CS (OS) 404/2012

The Court observed this mark as Well-known TM.

75

FORD

M/s Ford Motors Co.

High Court of Delhi

CS (OS) 1710/2015

The Court observed this mark as Well-known TM.

76

TOYOTA

M/s Toyota Motors Corporation

High Court of Delhi

CS (OS) No. 62/2007

The Court observed this mark as Well-known TM.

77

TIMBERLAND

M/s TBL Licensing LLC,

High Court of Delhi

CS (OS) No. 2158/2007

The Court observed this mark as Well-known TM.

78

SONY

M/s Sony Corporation

IPAB

OA/49/2007/TM/KOL

The High Court and tribunal has observed this mark as Well-known TM.

79

ULTRATECH

M/s UltraTech Cement Limited,

High Court of Bombay

Suit No. of 2288/1986

The Court observed this mark as Well-known TM.

80

VOGUE

M/s Advance Magazine Publishers INC

Court of XVIII Addl. City Civil Judge, Bangaluru

Suit No. 3079/2003

Suit No. 2860/2011

81

VIRGIN

Virgin Enterprises Ltd

High Court of Delhi

Order No.73/2005 (IPAB)

Suit No. 2860/2011

82

SIEMENS

Ms. Siemens Aktiengesellschaft

High Court of Delhi

CS (OS) No. 3785/2014

The Hon’ble Court has determined the subject mark as a well-Known TM

83

LAVASA

Lavasa Corporation Ltd.

High Court of Mumbai

Suit No. 562 of 2013

The Hon’ble court in its order dated 19/07/2013 has observed that subject mark is a well-Known Trademark

84

MOTHER DAIRY

Mother Dairy Fruit & Vegetable Pvt. Ltd.

High Court of Delhi

CS (OS) 2399/2010

High Court of Delhi, observed “MOTHER DAIRY (Blue Logo)” is a well known TM

85

MONGINIS for cakes, pastries and other bakery products

Monginis Foods Private Limited at B-60, Off Link Road, Andheri West, Mumbai 400053.

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference to cakes, pastries and other bakery products.

86

MARUTI For Industrial Oil, Automobile, Business administration and retail outlet, Research & Development.

Maruti Suzuki India Limited, At Plot No. 1, Nelson Mandela road, Vasant Kunj, New Delhi-110070

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference Automobile, Business administration and retail outlet, Research & Development

87

GODREJ

Godrej & boyce MFG. Co. Ltd., at Firojshanagar, Vikhroli, Mumbai-400079

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known trademark in view of its wide presence in the market

88

BIOCON For Pharmaceutical preparation, Business administration & retail outlet and Research & Development.

Biocon Limited 20th K.M. Hosur Road, Electronic City, Bangalore-560100

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference Pharmaceutical preparation, Business administration & retail outlet and Research & Development

89

BrahMos

BrahMos Aerospace Private Limited at 16 Cariappa Marg, Kirby Place Delhi Cantt. - 110010

High Court, Delhi

(CS (OS) No. 2655/2013

Hon’ble Justice in the matter observed that “I have no hesitation to come to the conclusion that the trademark Brahmos is a well-Known trademark.”

90

TCS For Software development and allied serviced

TATA SONS LIMITED, Bombay House, 24 Homi Mody Street, Mumbai-400001

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference Software development and allied serviced.

91

LuLu for Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores

LuLu International Shopping Mall Private Limited, 34-1000, NH: 47, Edapally, Kochi, Kerala - 682024

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference to Fast Moving Consumer Goods, Hospitality, Retail services / Malls, Financial Services and Fashion Stores.

92

INDIA GATE For Food grains and allied Products.

KRBL Limited, 5190, Lahory Gate, Delhi. 110006

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known in reference to Food grains and allied Products.

93

ZEE With reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education etc.

ZEE Entertainment Enterprises Limited, B-10, Essel House, Lawrence Industrial Area, New Delhi, 110035.

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known with reference to Services i.e. Media, Entertainment, Packaging, Infrastructure, Education, Processing of Precious Metals, Finance, Technology, Health care and Allied Services.

94

GARNIER Relating to ‘toiletry and cosmetic products.

L'OREAL S.A. At 14, Rue Royale Paris 75008 France.

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known with reference to ‘toiletry and cosmetic products’.

95

7 ELEVEN Relating to ‘retail chain, allied products and services

7-ELEVEN, INC. At 3200 Hackberry Road, Irving, Texas 75063, USA

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known with reference to ‘retail chain, allied products and services’.

96

ORAL-B Relating to oral care products

Procter & Gamble Business Services, At 1959 Upper Water Street, Suite 800, Halifax, Nova Scotia, B3J 2X2, Canada.

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known with reference to oral care products.

97

KESARI In respect of travel and tourism Services

Kesari Trust, Kesari Trust, At B/5, Silver Queen CHS, Soonawala Agiary Marg, Mahim, Mumbai-400 016, Maharashtra, India

Registrar of Trade Marks

N/A

The Registrar observed that the Mark is well-known with reference to travel and tourism Services.

CONCLUSION

The scope of protection of well-known trademarks will be determined after a comprehensive consideration of the above factors, as mentioned in the procedure. The Registry is very particular while considering the mark as Well -Known Trademark as once the mark is in the list of Well- Known Trademark then no one can take that mark in any goods and services, therefore the Registry goes into voluminous documents and lot of evidence is taken into consideration, otherwise this will be of no use as per the new Trademark Rules of 2017, which has been implicated and if it is not followed it will lead to a lot of legal proceeding related to the same. Therefore, to obtain protection for this kind of well-known marks, strong arguments should be submitted as to the degree of the relevance of the relevant goods, the degree of recognition of the well-known mark and the intention of the Applicant to file the petition for declaration of the trademark as a well-known.

Author: Aishani Singh, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.


[1] section 2 (1) (zg) of Trademark Act, 1999

[2] AIR 1994 Del 2369

[3] 2009 (41) PTC 284 (Del.)

[4] 2014 (57) PTC

[5] Section 11(6) & 11(7) of Trademark Act 1999

About the Firm

Khurana And Khurana, Advocates and IP Attorneys
Address E-13, UPSIDC, Site-IV, Behind-Grand Venice, Kasna Road, Greater Noida - 201310, UP, National Capital Region, India.
Tel 91-120-4296878, 91-120-4909201, 91-120-4516201
Fax 91-120-4516201
Email info@khuranaandkhurana.com
Link www.khuranaandkhurana.com

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