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Table of Contents

1. Introduction ..................................................................................................................................- 2 -

2. Classification ................................................................................................................................- 5 -

2.1 Class One – The Extortionist ..................................................................................................- 5 -

2.2 Class Two – The Counterfeiter ...............................................................................................- 6 -

2.3 Classification Three – The Competitor...................................................................................- 7 -

2.4 Classification Four – The "Supportive" Supplier ...................................................................- 7 -

2.5 Classification Five – The Coincidental Copycat ....................................................................- 8 -

2.6 Cyber Squatting ......................................................................................................................- 8 -

3. Legal provisions in China and India ..........................................................................................- 10 -

3.1 China ....................................................................................................................................- 10 -

3.2 India......................................................................................................................................- 14 -

4. Exemplary Cases ........................................................................................................................- 16 -

4.1 In China ................................................................................................................................- 17 -

4.2 In Indonesia ..........................................................................................................................- 18 -

4.3 In India .................................................................................................................................- 18 -

5. Possible Action ..........................................................................................................................- 22 -

5.1 Generic Methods against Trademark Squatting ...................................................................- 23 -

5.2 Country-specific Methods against Trademark Squatting .....................................................- 24 -

5.3 WIPO Arbitration .................................................................................................................- 25 -

6. Conclusion .................................................................................................................................- 25 -

7. Bibliography: .............................................................................................................................- 26 -

7.1 Sources – ..............................................................................................................................- 26 -

7.2 Words –.................................................................................................................................- 28 -

8. Appendix1 ..................................................................................................................................- 28 -

Trademark Squatting:

1. Introduction

Businesses often encounter a problem when they see possibilities in different markets
and try to enter them. They may be owning a trademark which has a good recognition
in its native market. But when they are prepared to venture into one of those business
sectors in another country, they find another person/s has effectively enlisted their
trademark there. Not only they are thus faced with a situation where they cannot enroll
their very own image, but also the present proprietor may now really control the
capacity to fabricate and prevent movement of the original bonafide owner’s items in
that nation. It may seem bizarre, but numerous organizations across the world have
actually stood up to circumstances like this throughout the years. “It's an activity known
as ‘bad-faith trademark filing’- sometimes also referred to as ‘trademark squatting’”1
– in essense it is a form of dishonest trademark documenting akin to squatting meaning
"unauthorized occupation". Generally organizations having a sizable business
comprehend that trademarks are vital to their business. Trademarks can incorporate the
item name, a realistic logo, a snappy motto, or maybe even the unmistakable state or
contours of an item that consumers readily recognize. Organizations depend on these
imprints to enable the consumers to recognize their items and readily distinguish them
from those of their rivals. The public often depend on them to recognize among
contending makers and to decide realness – they are thus a very useful tool for
marketing, new product launch and sales propagation in newer territory as well.

The World Intellectual Property Organisation (“WIPO”) defines Trademark Piracy

(Squatting) as “the registration or use of a generally well-known foreign trademark that
is not registered in the country or is invalid as a result of non-use”2.

According to Professor Doris Long has stated, a trademark squatter is a person who
seeks to register third-party marks domestically before their legitimate rights holders
have an opportunity to secure their rights.3

“What organizations often missed in the past is that trademarks, similar to licenses and
patents, are regional. Protection got from trademarks exist just inside the nation whose
laws conceded the rights. Research directed quite a long while back in the 90s by the
United States Patent and Trademark Office (USPTO) uncovered that just 15 percent of
private ventures working together abroad realize that a U.S. trademark gives insurance
just in the United States. This absence of information about territoriality was found
make huge issues for U.S. organizations, particularly in the context of worldwide

“World Intellectual Property Organization, WIPO Intellectual Property Handbook, 90 (2008)”.
Doris Estelle Long, Is Fame All There Is? Beating Global Monopolists at Their Own Marketing
Game, 40 GEO. WASH. INT’L L. REV. 123, 140 n. 44 (2008).

economy. Trademark squatting is the point at which one entity deliberately documents
a trademark application for a second entity's enrolled trademark in a nation where the
second party does not as of currently hold a trademark enlistment. This is no longer
targeted at trademarks of the developed world like U.S. or E.U. but increasingly to
popular marks in developing economies as well”4

They usually exploit the "first-to-file" trademark framework (if available) in that nation
but can do so in "first-to-use" jurisdictions as well by limited marketing or pushing
inferior quality products. “While the United States has a ‘utilization/use based’
trademark framework where trademark rights are gained by ‘prority of use’ many
nations around the globe have a first-to-document framework, granting trademark
rights to the primary candidate”5. At the point when dishonest filers acquire enlistments
in a specific nation, they are treated as legitimate trademark proprietors in that nation.
A dishonest filer's expectation is more often than not to motivate the genuine trademark
proprietor to buy the trademark enrolment; rather than to manufacture and markets
products bearing that mark himself. However, there can be honest intent and choice of
mark and this coupled with and honest effort to market his products can be considered
as bona-fide use. The debate begins from here.

Generally, trademark squatting is a special region in trademark right debate – whether

it stricto senso violates any law or not. It has been seen that for the most part enlistment
is a noteworthy barricade for remote organizations as once they increase the overall
reach, various nearby infringers attempt to enroll their trademarks so as to move their
items with other’s marks and make tremendous benefits. Regarding the general
principle, the select privileges of a trademark proprietor is regional in nature and also
apart from rights, laws relating Trademark changes from one geographical area to the
next. Trademark squatters exploit such extraordinary law authorization, which turns
into an obstacle for genuine businesses when organizations move toward becoming
multi-nationals. It tends to be troublesome, exorbitantly costly, and tedious to have such
a dishonest enrollment dropped or to continuously keep filing for ones own marks
across nations. Also, as the proprietor of the imprint, the dishonest filer can even
implement his or her rights against the genuine proprietor for trademark encroachment.
The dishonest filer could likewise request that the customs authorities in his area of
operation should prevent the goods of the genuine proprietor bearing the mark from
being imported to that country.

Any organization, extensive or miniscule, is a potential focus for dishonest filers – if it

has a trademark that is well recognized or has a special reputation or both. Now and
again, one’s very own maker, wholesaler, or retailer in another nation may choose to
petition for obtaining the bona-fide owner’s trademark in that country; usually without
permission from the real owner. In different cases, it could be an individual who


approaches him at a public exhibition or trade fare, inquires about the arrangements for
development and marketing in another nation, and after that enrolls the unsuspecting
proprietor’s imprint first in that market. These are only few of the numerous ways
trademark squatters can get access and rights concerning one’s mark and even register
it with mala-fide intention.

Trademark squatting isn't new to the corporate world. Practically every industry has
been influenced by such mala-file deals in trademarks and digital trademark squatting
also called cyber squatting. Trademark squatting thus alludes to enlisting names
comparable or indistinguishable to prevalent exchange marks, with the aim to coerce
the trademark holder to pay up for getting the same or prevent it from circulation.
Trademark Squatting is to a great extent observed in China. It pursues a “first to file”
framework rather than the “first to use” framework of the U.S. In a 'first to use/utilize'
framework the primary client of the Trademark gets the elite right, while, in a 'first to
file/record' framework, the main individual enrolling it gets the directly all rights to the
Trademark. In this way, the nation doesn't require any verification of genuine use or
plan to utilize the trademark in any application. Thus, firms foreseeing possible venture
into such nations, especially China which is a large and lucrative market, ought to apply
for enrollment at the soonest. Also, brands should enlist their trademarks in the separate
transliterations too.

“Like the People's Republic of China, India has a ‘first to file’— rather than ‘first to
use’ — enrollment framework. Under China's Trademark Law of 1983 and India's
Trade Marks Act of 1999, ‘first to file’ rule” 6 , where in a situation at least two
candidates apply to enroll indistinguishable or comparable trademarks for use on the
equivalent or comparative merchandise or administrations, the first/main application
for enlistment will normally be granted the trademark.

However, despite the fact that India permits the 'first to record' arrangement of security
of rights, it gives due weightage to utilization. But in India, the permissible arrangement
of applying for trademarks on a ‘proposed to be utilized’ premise, encourages
trademark squatters to enlist the trademark with no real confirmation of utilization. It
is just when the real owners of the trademark try to get some answers concerning it, that
the issue emerges. With worldwide organizations the nearness of incalculable number
of trademarks in various nations can be an overwhelming issue to sort out and check. It
is more regrettable when the squatters move their very own items, and malafidely trick
the general population into trusting that they are from a confided-in universal brand.
Because of the noticeable quality the Indian trademark law provides for utilization,
there is a protection somewhat akin to that in the U.S. for a bonafide user, but a
protracted legal encounter, involving tortuous court proceedings and delay, may be
unavoidable – leading to loss of business opportunity cost.


Nature and Types of Squatting:

2. Classification

In general, all outsider registrants of trademarks are considered together under the basic
rubric of ‘trademark squatters’; yet truth be told, the registrants can be isolated into five
particular classifications, and the fitting action to be taken by the real owner (and the
probability of accomplishment of success) varies with the category in which they fall.
They are described in detail in the following sections. A squatter can, “in general:

(1) sell the trademark back to the real owner at a premium;

(2) distribute products labeling the trademark to consumers who believe the products
are real;

(3) exclude the real owner from the market by establishing a claim of a trademark
infringement; or

(4) use the trademark to market products which are different from those sold by the real

Examples of specific countries, especially China and some from India, have been
considered to exemplify the classification and bring out the differences between them.

2.1 Class One – The Extortionist

These squatters proceed to register trademarks that are widely recognized in other
locations, with the sole objective to extort and hold the original business to ransom
when they try to enter the market in question. While this can happen in convoluted ways
in all jurisdictions, those with ‘first-to-file’ trademark laws are particularly susceptible.
For example, China's free enterprise frame of mind towards dishonest trademark
enrollments has made an almost house-industry for various bad-faith people who
register brand names having a distiction belonging to foreign organizations; and after
that hold those brand names for payoff. Any entity who manages or deals in China
trademarks can be potentially running into this kind of trademark squatter. They usually
document several different applications, for a wide assortment of brand names and in a
wide scope of “Nice” classes. The enrollments might be for various sorts of products or
services than what the original brand is known for. The trademark squatter has no
association with any of the brands, and no expectation of consistently utilizing them in
business. They are a great non-rehearsing element, and their sole goal is to adapt the
trademark enlistment and then pitching it to the actual owner for a high price when in
trying to enter the China market, he is confronted with the astounding fact that it is

Samantha D. Slotkin, Trademark Piracy in Latin America: A Case Study on Reebok International Ltd.,
18 LOY. L.A. INT’L & COMP. L. REV. 671, 671 (1996).

already taken. They will now and again approach the trademark proprietor, or they may
pitch the trademark to another outsider on one of China's trademark clearinghouse sites.
The costs can change but US$10,000/enrollment can be a typical beginning offer.

Such enlistments are the very meaning of dishonesty, but can difficult to discredit by
law. But China is gradually showing signs of improvement at managing these
circumstances, and yet still now even in grievous cases, it's a long way from satisfactory
enforcement. The run of the mill course includes a nullification suit and an appeal and
re-appeal. The majority of this can take years and cost a large sums, and there's no
certainty of solution. It is thus not difficult to perceive why numerous genuine brand
proprietors simply pay the cash and proceed onward, much like an annoyance claim.
On the other hand, some genuine brand proprietors will hold up three years and record
a non-use crossing out; if the squatter has not actively marketed using the brand in the

2.2 Class Two – The Counterfeiter

As if the first is not enough there is a second rung of squatters thereafter. These squatters
have enlisted outside organizations' trademarks not to hold them for payment, however
but to utilize them in business. In reality, these squatters' plan of action is often to create
fake merchandise they can move in the country e.g. a trademark reputed in U.S. in
China (or in whatever other nation where the outside organization has not enrolled its
trademark) without any dread of response from the genuine brand proprietor – in light
of the fact that the squatter legitimately possesses the trademark in the other country!
Some of the time they will move indistinguishable sorts of merchandise from the
genuine brand proprietor, some of the time not – everything relies upon how understood
the brand is, and what the squatter thinks will create more cash for him and where
quicker money can be made. Customarily one can see these squatters register more than
one outside brand names in the target country, all in similar classes of merchandise.
This is on the off chance that while one outside brand is great in the other country – say
China, four are better.

It is typically progressively costly for the genuine brand proprietors to buy these malafie
enlistments – due to the possibility that the enrollments are worth more to the trademark
squatter who makes money on a continual basis. Additionally, a non-use wiping out
application will not succeed, in light of the fact that the imprints are really being utilized
in business. At times the genuine owner may prevail with a dishonesty refutation suit,
however this will to a great extent depend on whether the specific imprint was notable
in the other country, which is a troublesome thing to demonstrate in court. Like for a
long time, the accepted Chinese position has been that if outside brand proprietors
thought about their imprints in China, they ought to have enlisted them there. Here, the
supposed trademark squatter is actually utilizing the imprint in business and
presumably additionally generating employment and covering regulatory obligations

by paying taxes and otherwise following all generally accepted business practices. That
looks significantly preferable to Chinese experts over a sole-owner non-marketed brand.

2.3 Classification Three – The Competitor

The third classification of squatter looks a great deal like the second class – they
document trademarks covering a specific, genuinely tight arrangement of products.
However, this sort of squatter is certifiably not a forger and has no plans to utilize the
imprints in dishonest business; but in genuine manufacturing and marketing of products
of same category. Or maybe, this squatter is a rival, and their objective is to keep the
bona-fide entity from entering the other market, for example a U.S. brand to the Chinese
market (at any rate under his favored image or name). The more particular the market,
the more probable this is to happen in light of the fact that everybody knows the
majority of alternate players. More often than not, the Chinese producer in a specific
industry register the trademarks of all its European and American contenders. They at
that point offer the contenders a Hobson's decision: purchase the trademark at a terribly
expanded value (upwards of $250,000) and assign the contender as their selective
merchant in China, or bid a fond farewell to their brands in China for ever.

The competitor will likewise regularly try to prevent items produced with its trademark
byt the genuine owner or by any other individual doing so in outsourcing mode; from
leaving China; which is a favoured sourcing and production destination for western
brands. As it were, they may effectively pressurize to close down one’s whole business
worldwide by interfering with the sole generation and production point.

Brands that are in reality surely understood in the new country may have some
possibility of getting back in wresting trademark enrollments from such registrants;
however as noted over that it occurs only once in a while. Most outside brand
proprietors in this position are in a tough situation. The contention that these trademark
squatters gamed the framework won't get much footing in legal fora due to the
prevailing laws.

2.4 Classification Four – The "Supportive" Supplier

Here and there organizations will find that their image and names have been enrolled
by a recognizable entity – their very own provider or merchant in the other country e.g.
the agent/distributer of a well known U.S. brand of cigarettes or cellphones in China.
On the off chance that the provider or merchant is as yet delivering or appropriating
products for the organization, the proffered clarification is generally of a specific kind:
the provider or wholesaler enrolled the imprint to keep any fraud squatters from doing
as such first. This might be valid, yet the brand proprietor should ask why the
provider/merchant didn't advise them first as well as inquire as to whether the brand
proprietor needed to enroll the imprint itself. In any case, if the relationship is as yet
positive, it is a moderately clear procedure for the provider/wholesaler to appoint the

imprint to the brand proprietor. A few providers/wholesalers will endeavor to hold
responsibility for trademark; however this ought to be stood up to.

On the off chance that the relationship has turned revolting, which is typically the
situation when the trademark proprietor is a previous provider/wholesaler, a
straightforward task of getting back the mark might be hard to secure. However, this
circumstance is the least demanding one in which to demonstrate a dishonest enlistment.
Insofar as one can demonstrate the presence of a business association with the provider
or wholesaler (e.g., through buy requests, contracts, and other documentation), it is very
likely the squatter will be compelled to surrender the enrollments. Obviously, the
procedure is much simpler in the event that the original manufacturers have a well-
documented arrangement or wholesaler contract in which the provider explicitly
concurs not to enlist the proprietor’s IP.

2.5 Classification Five – The Coincidental Copycat

The last classification isn't generally a conventional trademark squatter and ostensibly
shouldn't be a considered a downright dishonesty as others. At times, somebody in
another country, say in China enlists the trademark of one in another country say U.S.
since the first party thought it out all alone freely and independently. This usually occurs
with word marks – but rather unlikely that two candidates would think of a similar logo
by visually impaired possibility. In these cases, the coincidental trademark proprietor
might be ok to sell out the trademark, however on the off chance that he is not willing
to do so, there's little that the original bonafide owner can do about it. The registrant
essentially pursued the premises of China's Trademark Law here: that they were the
first to document (not the other side), thus they get the opportunity to keep the imprint.

In total: on the off chance that someone finds that his business logo/image has been
taken by a trademark squatter in another country, he should first decide the
classification they fit in, and afterward plot his system of action to get the mark back,
in the most suitable manner. Even better, to register one’s own trademark withut losing
time in all potential countries that can be a market and forestall having to strategize by
any means.

2.6 Cyber Squatting

Trademark proprietors likewise face digital squatting or domain name squatting — an

issue not restricted to China or India; but even in developed nations. Such digital
squatting includes essentially enrolling a cyber-space host name of comparable
similarity or name-wise indistinguishable to an outstanding and well-noted enlisted
trademark with the aim to exploit the altruism in that trademark.

India has seen numerous cases where the internet domain-names of well-understood
trademarks or names similar to that are enrolled by squatters in the expectation of
selling them to the proprietors of those imprints (or adversary proprietors) or basically,
to exploit the fame appended to those imprints – by the most profitable means; selling
or usage. Area names are of significant proprietart value for each organization in each
sector of industry – for business promotion or even as operations and supply channels.
With the headway in web correspondence being made like never before, the space name
might prove to be as vital as a trademark.

“For a situation that was refereed by the World Intellectual Property Organization's
Arbitration and Mediation Center, Armani guaranteed that a craftsman who enrolled
the area name was a trademark squatter. With all due respect, the craftsman
contended that his name was Mani, and his initial two initials were A.R., which
qualified him for register his space named as The referees administered
in A.R. Mani's support as he had enrolled the trademark before Armani. The judges
likewise discovered that Mr. Mani had made sensible counteroffer to Armani's unique
offer to purchase the area name from him. G. A. Modefine S.A. v. A.R. Mani, Admin.
Board Decision, Case No. D2001-0537 (2001).

In 2005 the .IN Registry was made in India by the National Internet Exchange of India
to ensure space names with an ‘.in’ augmentation. Be that as it may, it remains the
obligation of the trademark proprietor to shield its trademark from any sort of
encroachment. For example,, and are not possessed by the individual organizations. A few
organizations have needed to confront extensive question before getting injunctive
alleviation against squatters. E.g., Yahoo! Inc. v. Akash Arora, 1999 PTC (19) 201

Taking everything into account, organizations entering or intending to enter the Indian
market must take the careful steps required to be accompanying the move; which is by
and large similar to and applicable inother jurisdictions as well:

• File early, File regularly. India's ‘propose to utilize’ framework for trademark
enrollment, joined with the trademark office's excess load and pending applications,
makes it a basic step for brand proprietors to record a trademark well ahead of time.

• The cost for the enlistment of a trademark in India is relatively low and usually
miniscule compared to the expense of legal case.

• Register the English-language brand name as well as Indian renditions of the brand
name (which might be more mainstream in the nearby market than the English

• Due to India's class recording framework, organizations need to secure their brands
over all types of products, not only those in which they are actually in at the moment.

The World Intellectual Property Organization site demonstrates that there are 34 classes
of products and 11 classes of trademark enrollment in India. This confines the potential
for a trademark squatter to enroll trademarks related with non-customary items.

• Subscribe to a trademark watching administration that will screen trademark

applications in India. Different firms give this backoffice support in the Indian market.

• Last yet not the least, register the internet area name (domain) with all the major
gTLDs (generic Top Level Domains).

Any organization’s name, little, medium or vast, is a potential name-in-demand for

tricky trademark filers; if there is a familiarity associated to it. At times, the maker,
retailer or wholesaler in another nation may choose to enroll the trademark domain.
These numerous ways domin theft are possible with an entity’s name or trademark.

Thus trademark squatting circumstances, for the most part emerges when an individual
in an outside nation enrolls a trademark which has been enlisted by its original
proprietor in its major nation of operation. There have been different occurrences of
squatting because of which some notable organizations are not ready to get into
litigation to recover their trademarks or domain names and need to pay a weighty cost
to such unscrupulous organizations or people to stop the utilization of the trademarks.

Legal Situation – in China and India:

3. Legal provisions in China and India

We have already stated that trademark squatting is more prevalent in developing

countries and fast-growth economies. We shall now proceed to take a look at the legal
provisions in the two major economies in the world China and India; to see how the
law provides to tackle the same. Both are “first to file” systems but India provides for
certain legal provisions and case laws which tend to place it mid-way between a typical
“first to file” jurisdiction like China and a typical “first to use” system like U.S. We
shall not consider the legal provisions of “first to use” countries like U.S. here as
squatting is considerably more difficult over there.

3.1 China

The superseding goals of the Trademark Law amendments in 2014 were to:

• streamline techniques related with getting trademark rights;

• enhance security for legitimate proprietors; and

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• alleviate issues faced by genuine owners, brought about by trademark squatters.

Since the modification, point by point controls, legal elucidations and examination
principles have additionally been operationalized. The modified law has been utilized
to handle dishonest filings and tries to counter the most recent patterns in such cases.

Those universal brand proprietors which don't as of now have a trademark enlistment
in China for the merchandise or administrations to which the debate relates should hope
to take advantage of Article 32 of the reexamined law (Article 31 of the 2001
Trademark Law) so as to contradict or nullify marks recorded by trademark squatters.
Under this article, the adversary must demonstrate that its imprint has accomplished a
specific level of acclaim in China, which is a noteworthy obstacle, particularly for
brands that don't yet have a solid nearness in China.

Be that as it may, the modified law likewise presents choice of routes for brand
proprietors to battle against trademark hunching, particularly for the most well-known
conditions in which a trademark is pre-emptively documented.

The general rule of good confidence was first presented in Article 7 of the Trademark
Law and states that “the application for trademark enrollment and the utilization of
trademarks ought to pursue the standard of trustworthiness and validity”.

About four years after its execution, authoritative experts appear to consider this just as
an all-encompassing standard and are hesitant to depend on it so as to dismiss or refute
a trademark. At times, however, the experts have adopted a progressively adaptable
strategy, considering diverse factors so as to discover an infringement of the rule of
trustworthiness and validity.

For instance, in the China Trademark Office (CTMO) Opposition Decision

0000012861 (2016), the CTMO rejected the enlistment of the blemish on the premise
that the candidate had connected to enlist numerous imprints which are
indistinguishable or like others' enrolled imprints; it was hence trying to pull a fast one
and in break of Article 7.

In CTMO Opposition Decision 0000001877 (2017), the CTMO rejected the enlistment
of the imprint AMWAY as apparatus dependent on Article 7, considering:

• the acclaim of the adversary's imprint in China;

• the high level of likeness between the imprint in debate and the adversary's imprint;

• the close association between the assigned products and ventures; and

• that the candidate gave no sensible clarification to why it had embraced the imprint.

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All the more frequently, though, the thought of dishonesty is utilized as a factor in
augmenting the claim of other explicit arrangements at infringement, misleading or
other ill-advised acts – particularly on the ground of "deceptive or other improper
means" under Article 44(1) – and in finding comparable imprints for comparative
products and ventures under Article 30.

Utilization of Article 44(1) against substantial scale squatters Article 44(1) gives that
any imprint that has been enrolled through misleading or other ill-advised methods
might be negated. Despite the fact that this article existed in the 2001 Trademark Law,
it was viewed as pertinent just to negate enrolled imprints, instead of a ground on which
to contradict applications.

In any case, following the usage of the changed law there has been an expanding
dependence on Article 44(1) so as to dismiss or discredit trademarks where the
candidate has duplicated others' popular imprints. Practically speaking, the CTMO, the
Trademark Review and Adjudication Board (TRAB) and the courts once in a while use
Article 44(1) in mix with Article 7.

In TRAB choice 0000055952 (2017), the TRAB decided that the way that the registrant
had connected for more than 300 imprints indistinguishable or like other unmistakable
or surely understood imprints implied that it expected to duplicate others' notable marks
through inappropriate methods as per Article 44; such ill-advised trademark enrollment
would upset the typical request of trademark enlistment and reasonable challenge and
in this way broke the guideline of good confidence.

The CTMO for the most part settles each case individually. Be that as it may,
Guangzhou 4399 Information Technology Limited Co had documented in excess of
9,000 trademark applications, 210 of which were tested by various rights holders. The
CTMO arbitrated 39 of the restrictions together and dismissed all applications on the
premise that the candidate's huge scale trademark squatting was a demonstration of

Remote brand proprietors might be consoled by this pattern, but considerable number
of trademark squatting exercises are worked by expert agencies holding many
trademarks at one go. Of late, progressively advanced squatters have been enlisting
distinctive organizations’ marks so as to hold trademarks in the name of many separate
business entities, in this way bringing down the absolute number of imprints held by
each organization. Brand proprietors may then need to demonstrate that the candidate
is identified with understood squatters, which might be troublesome if the syndicate
utilizes distinctive people (eg, relatives or companions) to go about as executives of the
trademark holding organizations.

Extent of earlier dealings in dismissing applications the updated Trademark Law has
augmented the conditions in which the experts may dismiss or discredit a trademark on
the ground that it was hunched down on by a gathering identified with, or which has
had earlier dealings with, the legitimate proprietor.

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Article 15(1) of Chinese Trademark law gives provision that a trademark ought not be
granted to its supplier or distributor (“Agent”) without the proprietor's authorisation.
Such “Agent” is additionally characterized in Regulation 15 of the 2017 Supreme
People's Court's (SPC's) Interpretation on Issues Relating to Administrative Trademark
Litigation Involving the Grant and Determination of Trademark Rights to include:

• the trademark operator or delegatee;

• the deals operator or merchant; and

• family individuals from the operator or agent.

Article 15(2) of the amended law grows this main-operator relationship, giving that any
endeavor to enlist an imprint by an agency who has an authoritative, business or other
association with the trademark proprietor and knows about the imprint ought to be
prevented from grant. “Authoritative or business relationship” incorporates a wide
scope of exercises, as indicated by Part 11.3 of the Examination Standards issued by
the TRAB in 2016, including:

• sale and buy;

• a contract for production;

• a establishment (trademark permit);

• an financial specialist, support or co-coordinator of a joint occasion;

• business visits or dealings;

• advertising organization;

• other business dealings; and

• family individuals.

Further, in accordance with Regulation 16 of the SPC elucidation, “other connections”

incorporate relatives, work connections and geological nearness of places of work.

The above would incorporate conditions in which the gatherings are in exchange for an
essential office or business relationship however have no legitimate relationship.

Part 11.3 of the Examination Standards gives instances of proof required so as to

demonstrate such connections (eg, contracts, letters, exchange archives and acquisition
data which show an assention or business bargain, corporate finance, work contracts,
social protection, medicinal protection materials and family unit enrollment

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Practically speaking, where a previous investor or executive of the first hardware
producer (OEM) or wholesaler sets up another shadow organization in Hong Kong and
registers the brand proprietor's trademark in China, legitimate proprietors might
probably persuade the court through a point by point chain of proof. A case of a total
chain of proof to demonstrate an earlier relationship would include:

• a circulation contract between the OEM or wholesaler and brand proprietor;

• a business contract or different records between the trademark candidate and OEM;

• documents appearing between the brand proprietor and trademark candidate to

show the candidate's learning of the brand; and

• where the trademark candidate is an organization, proof to demonstrate the

connection between the previous investor or chief of the OEM or wholesaler and the

While the above arrangements have extended the lawful extent of security to the
legitimate proprietors, it stays hard to demonstrate that the candidate of the trademark
is a relative of the individual who has been in contact with the legitimate proprietor.
Individual documentation, for example, a marriage authentication or individual ID card,
is hard to get.

Inventive utilization of Article 10(1)(7) against imprints that are free-riding others’
popularity can be useful. Article 10(1)(7) of the modified Trademark Law denies the
utilization of tricky imprints which would deceive the lay consumers with respect to
their source. This was planned as an outright ground for all refusals counteracting marks
that contain deceiving or misleading components as such. By and by, the experts have
likewise expanded Article 10(1)(7) to apply where the exact origin of the restricted
mark is tricky to determine.

3.2 India

The details of trademark squatting prevention laws in India based mainly on the
principle of “well known trademark” are given in Appendix1. Part of it is statutory
while part is laid down in a series of case laws from various High Courts as well as the
Supreme Court of India.

The trans-border fame rule is additionally followed in India, which maintains that the
popular knowledge of the brands of one, who however doesn't have effective business
presence in India, are known in India by virtue of the nearness of the brand as
commercials in the media or by whatever other channels that acclimates individuals
with the brand name. Since there is an association between different nations, it is an
intelligent assumption that such measures which reduce transaction cost of a customer

- 14 -
by easing of decision making are important to be guaranteed and that the common
knowledge of one party don't make benefit or hurt other parties. Such situation can
happen when both sides belong to the country, between a domestic and an international
party and even between two foreign entities. This is the place the significance of
ensuring trans-bounday or overflow of global trademark fame of foreign organization
emerges. As the changing situation and progression in innovation, it has turned out to
be essential to secure the licensed innovation rights among different nations. Issues in
regards to encroachment of protected innovation rights in India, which was existing in
some other nation have been managed numerous points of reference. The Supreme
Court in this issue has set down in different cases that an organization, having it's
trademark rights and its fame in some other nation can ensure its licensed innovation
rights in India.

At the point when Walmart tested an organization that was utilizing the trademark
“Wall Mark”, the retail chain could get an order of record of its worldwide knowledge
and got injunction. Despite the fact that it must be expressed that it is difficult to set up
trans-border knowledge, and it tends to be expensive and more regrettable, tedious to
have the squatter's enrollment dropped. India likewise perceives and pursues the "well-
known" standard. Despite the fact that to build up that an unregistered mark is notable
a protracted procedure of suit is required, which postpones the business as well as
makes a terrible beginning. The reputation of a trademark in India or globally is
likewise shielded from abuse under customary law, however again the weight of
demonstrating it lies with the proprietor. Considering the excess of cases, it might take
years or even 10 years till there arrives a great judgment. It is subsequently constantly
encouraged to enlist one's imprint, regardless of whether the plans of venture into India
are in the offing. Not to overlook, ensuring it doesn't fall into neglect.

In Apple Computer Inc. vs Apple Leasing & Industries (1993) IPLR 63 (Del), the Delhi
High Court had held that “if the reputation of a trader, trading or carrying on business
in another country, had travelled to a country where he carried on no business, this
reputation having been acquired. On the basis of extensive advertisements and publicity,
then another trader could be injuncted to protect the reputation of the trader who was
not trading in the country.”9

The Supreme Court then conclusively established the law related to the transborder
reputation in the case of Milmet Oftho Industries & Ors. Vs. Allergen Inc. (2004) 12
SCC 624, by laying down, "the mere fact that the respondents have not been using the
mark in India would be irrelevant if they were first in the world market”.10

The provisions name-based trademark protection across borders of is provided in

Section 35 of the Indian Trade Mark Act, 1999 and offers protection to foreign trade

Apple Computer Inc. vs Apple Leasing & Industries (1993) IPLR 63 (Del)
Milmet Oftho Industries & Ors. Vs. Allergen Inc. (2004) 12 SCC 624

- 15 -
marks on the basis of their international reputation of names. This can be seen in cases
like Kamal Trading v. Gillette U.K. (1988) PTC 1 (Bom-DB).

In the present global communication era, a brand that ends up famous in one nation can
turn into the equivalent in another without really moving or effectively promoting the
items in that nation. The internet ensures that an item well known in one country gets
noticed in others as well. Thus it is astute to enroll the trademark in different nations,
after the main beginning achievement of the brand, particularly in the developing
markets. Similarly vital is to keep up a sound comprehension of the IP laws in every
nation just as keep a tab on the most recent IP improvements. As for built up brands
there untruths much more motivations to secure one's trademark and be on the watch
for trademark squatters.

To a limited extent with a view to counter squatting, India has presented the "propose
to use" standard, which, incidentally, has had a somewhat contrary impact. The
"propose to use" arrangement is like the U.S's. "intent to use" rule. India's "propose to
use" arrangement gives that no earlier utilization of that mark is required for its
enlistment. The arrangement enables a brand proprietor to get its imprint secured by
enrolling it in India despite the fact that the proprietor isn't utilizing it and only means
to do as such later on. Once more, be that as it may, a proceeded languid disposition in
enrolling has opened the way to trademark squatters who register under the "propose to
utilize" arrangement first.

Quick trademark enlistment ought to be a basic need for any brand needing to enter the
Indian market. Enlistment is a moderately cheap option in contrast to suit. India, does
however, has an option in contrast to indicting the squatter in courts. “The Ministry of
Commerce has a trademark ‘dispute resolution’ system for enrolled trademarks. In what
could be stressing news for organizations, however, the Commerce Ministry revealed
in 2011 that it had more than 126,000 trademark question cases pending and came up
short on the labor to inspect them”11.

Cases on Trademark Squatting:

4. Exemplary Cases

“In 2012, Apple confronted an issue with its Trademark enlistments because of
Trademark Squatting and needed to pay a robust measure of $60 million to the
proprietor of the 'iPad' Trademark in China. A conceivable question of a similar sort
could emerge in India as for Amazon. Amazon has presented Prime, Echo and Prime
Music in India can't continue further with the enrollment at the Indian trademark office.
It has connected for these trademarks under class 9, which is principally identified with


- 16 -
PCs, programming and hardware”12. In 2016, Michael Jordan, after a long legal battle,
got a positive decision from the Supreme Court of China, that emerged out of the fight
in court against Qiaodan Sports, a Chinese sportswear organization utilizing the
Chinese transliteration of Jordan's name as its trademark. A comparable case happened
with Viagra, wherein the transliteration of Viagra in China was "Weige" and was
enlisted in China. Therefore, notwithstanding a few claims, Pfizer has neglected to pick
up responsibility for Chinese trademark, Weige, and has not been able in Vietnam and
others to make others quit utilizing the trademark.

Some exemplary cases across countries are discussed below:

4.1 In China

In China, CTMO Opposition Decision 0000001877 (2017), the CTMO had rejected the
enlistment of the imprint AMWAY and gadget dependent on Article 7, considering:

• the acclaim of the adversary's imprint in China;

• the high level of likeness between the imprint in debate and the adversary's imprint;

• the close association between the assigned products and ventures; and

• that the candidate gave no sensible clarification to why it had embraced the imprint.

So also, in CTMO Opposition Decision 0000040841 (2016) the CTMO perceived the
fame of Alticor Inc's imprints, including "??" (Amway in Chinese) and "??Amway"
among the purchasers in China and consequently dismissed the enrollment of a similar
imprint "??" by a candidate in Class 35 (medicate retail or discount). It held that
purchasers were probably going to be misdirected into trusting that the administrations
given by the candidate the imprint are given by Alticor or identified with Alticor here
and there.

Again, in CTMO Opposition Decision 0000011239 (2016), the CTMO rejected the
enrollment of (ELAN ENGLISH EDUCATION TO HARVARD and configuration) in
Class 41 on the premise that the word “Harvard” is probably going to misdirect
shoppers into trusting that the candidate is identified with Harvard University, which is
outstanding in the training field, and is along these lines misleading in regards to its
exchange inception.

TESLA in China:

The acclaimed case which was seen in China was when TESLA attempted to enlist
itself in China, yet one Chinese occupant had enrolled the equivalent and was utilizing


- 17 -
a similar dissemination of items in the nation. At the point when Tesla connected for
trademark enrollment in the state, it was contradicted by that person. Numerous
arrangements were led by both the organizations and afterward the trademark was sold
by the occupant to Tesla in return for 60 million USD.

4.2 In Indonesia

The world acclaimed Ikea had lost its trademark rights to the word 'Ikea' in Indonesia.
In spite of the fact that not basically trademark squatting, this case appeared to be a
shrewd move by an Indonesian and a botched chance for Ikea. The Indonesian rattan
furniture organization called "Intan Khatulistiwa Esa Abadi", enrolled its abbreviation
"IKEA" in 2013. While the Swedish worldwide however enrolled the trademark in 2010,
neglected to effectively utilize the trademark for 3 continuous years for business reason,
which, as per the Indonesian Trademark law implied that it could be erased from the
library. Which did occur, and the Supreme Court maintained the trademark for the
rattan furniture 'Ikea'.

4.3 In India

Closer home, it was the Burger Giant, Burger King which is as yet at loggerheads with
a cheap food eatery with the name Burger King India. Under Section 47 of the
Trademarks Act a trademark can be expelled from the register because of non-use for
a time of 5 years and 3 months upto the date of use for the expulsion. The Indian Burger
King with all due respect expressed that the USA chain had however enrolled the
trademark in 1979 had not utilized it and besides, had neglected to contradict the
enlistment of their application. This added up to both nonuse and assent. As both the
sides fight it out, it remains to be seen on whose table is equity served.

Two other demonstrative cases are –

“R. Dongre and Ors. v. Whirlpool Corporation and Anr. In India”13:

Offended party used to appropriate items to US Embassy in India only, yet after some
time they went into the association with TVS and in this way the imprint enrolled to
them was deserted by them and thus was enlisted by the litigant. This enlistment was
contradicted by TVS whirlpool, however the restriction was not acknowledged by the
recorder of the trademark. In spite of the fact that on discovering that organization
possessed by NR Dongre was showcasing second rate nature of machines under the
name Whirlpool, TVS Whirlpool filled an intrigue in the High Court looking for a
perpetual directive. The High Court allowed an order holding that they were at that
point enjoyed pitching their items to the U.S government office in India. Furthermore,

(1996) 5 SCC 714 : 1996(16) PTC 583 (SC)

- 18 -
additionally promotions in different universal magazines which were being flowed in
India about the items sold by the company bearing the trademark and name Whirlpool,
the Supreme Court likewise maintained the choice of High Court. This case has in this
manner set a point of reference for the acknowledgment of the regulation of trans-
border reputation and trademark squatting in India.

“When the TM Act became effective in September 2003, the protection of well-known
marks acquired a new hue in India. The TM Act contains essentially five provisions
referring to well-known marks, namely, Sections 2(1)(zg), 11(2), 11(6), 11(7), and
11(9). Also, under Section 29(4) of the TM 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”14. Some
of the cases that followed are -

“In Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)], the High
Court, while finding trademark infringement under Section 29(4) of the TM Act, 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 TM 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’.”15

“In Ford Motor Co. & Anr. v. Mrs. C R Borman & Anr. [2008 (2) CTMR 474 (Delhi)
(DB)], the Court went by the letter of Section 29(4) and held that if the mark enjoys a
reputation in India, the plaintiff does not have to prove the defendant’s deception. The
defendant’s use of the mark FORD in connection with footwear, was held to be
infringement under Section 29(4) of the TM Act.”16

“In ITC Ltd. v. Philip Morris Products SA & Ors [2010 (42) PTC 572 (Del.)], 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.”17

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

Global IP India -
Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)] – TMR Reporter:
Ford Motor Co. & Anr. v. Mrs. C R Borman & Anr. [2008 (2) CTMR 474 (Delhi) (DB)]
ITC Ltd. v. Philip Morris Products SA & Ors [2010 (42) PTC 572 (Del.)]

- 19 -
manufactured medicinal productsand 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

“In Chorion Rights Ltd. v. Ishan Apparel & Ors [2010 (43) PTC 616 (Del.)], the court
held that while the plaintiff proved high sales volume in India and abroad between 2002
and 2008, it failed to establish 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 decided against the plaintiff.”19

“In Rolex Sa vs. Alex Jewellery Pvt Ltd & Ors. [2009 (41) PTC 284 (Del)], the Plaintiff
had brought an action against the Defendant so as to restrain them from dealing in
artificial jewellery or in any other product bearing the trade name ROLEX. In the said
case the Court while invoking Section 2(z)(g) was of the view that the segment of the
public which uses the watches of the category/ price range as the watches of the plaintiff,
ROLEX is a well known trademark. The said segment of the public if comes across
jewellery/ artificial jewellery also bearing the trademark ROLEX is likely to believe
that the said jewellery has a connection to the plaintiff. The Court considered the
provisions of Section 11(6) of the Act and opined that ‘upon testing the trademark of
the plaintiff on the touchstone of the ingredients of the said provision also, I find the
said trademark of the plaintiff to be satisfying the test of a well- known trademark’.”20

“In the case of Indian Shaving Products Ltd. & ... vs Gift Pack & Anr. [(1998) PTC 698
(Del)], the Delhi High Court passed its judgment in favor of the Plaintiff. In the said
case the factor determining reputation of a mark under Section 11(6) i.e. the duration,
extent and geographical area of any use of the trademark was dealt with. The defendants
in the case alleged that the plaintiff had used the trademark ULTRA for a very short
period and hence could not have acquired the necessary goodwill and reputation during
the said period. However, the Court while determining facts of the case observed that

Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd. [2010 (44) PTC 25 (Bom.) (DB)]
Chorion Rights Ltd. v. Ishan Apparel & Ors [2010 (43) PTC 616 (Del.)] – TMR Reporter:
Rolex Sa vs. Alex Jewellery Pvt Ltd & Ors. [2009 (41) PTC 284 (Del)]

- 20 -
the Plaintiff had achieved high sales and advertised heavily thereby eliminating the
requirement of long duration of sale.”21

“In the case of Marica Ltd v. Madhu Gupta, I A Nos 15565 and 16243/ 2009 in CS (OS)
No 2275/ 2009, High Court of Delhi (7 April 2010), the Court while deciding dispute
relating to the trademark ‘KAYA’, considered the fact that the Plaintiffs had spent huge
amount of money in their advertisements and thus has attained distinctiveness and
granted injunction in favour of Plaintiff.”22

“Another case in point is the Hari Puttar case - Warner Bros Entertainment Inc and Anr
v Harvinder Kohli and Ors, [2008 (38) PTC 185 (Del)], where there was a trademark
dispute between the Indian movie name called ‘Hari Puttar’ and the well known novel
series ‘Harry Potter’. The Court in this case held: ‘What has to be borne in mind is that
the Harry Potter films are targeted to meet the entertainment needs of an elite and
exclusive audience - the cognoscenti - an audience able to discern the difference
between a film based on a Harry Potter book on the one hand and a film which is a
Punjabi comedy on the other…… To put it differently, an illiterate or semi-literate
movie viewer, in case he ventures to see a film by the name of Hari Puttar, would never
be able to relate the same with a Harry Potter film or book. Conversely, an educated
person who has pored over or even browsed through a book on Harry Potter or viewed
a Harry Potter film, is not likely to be misled’.”23

“In Pizza Hut International LLC & Others Vs. Pizza Hut India Pvt. Ltd. [2003 PTC 208
(Bom)], the judge observed - ‘I do not have any hesitation in coming to the conclusion
that in the present case also the Defendants sole intention was to trade on the Plaintiffs
well established and worldwide reputation and famousmarks/logo’.”24

Trans-border reputation was coupled with well known nature of the mark in Alfred
Dunhill Limited Vs. Mr. Girish Kumar Hatankar & Ors. [2003 PTC 469 (Del)] 25 and
goodwill was coupled with the concept in Castrol Limited & Anr. Vs. Telangana
Enterprises & Ors. [PTC (Suppl)(2)606(Mad)]26.

“Although not exactly a well known trademark case, it can be mentioned that the well
known alcohol manufacturing company, Shaw Wallace, successfully enforced its
trademark rights, especially the numerical part of its brand name ‘5000’ in the cases of

Indian Shaving Products Ltd. & ... vs Gift Pack & Anr. [(1998) PTC 698 (Del)]
Marica Ltd v. Madhu Gupta, I A Nos 15565 and 16243/ 2009 in CS (OS) No 2275/ 2009, High Court
of Delhi (7 April 2010)
Warner Bros Entertainment Inc and Anr v Harvinder Kohli and Ors, [2008 (38) PTC 185 (Del)]
Pizza Hut International LLC & Others Vs. Pizza Hut India Pvt. Ltd. [2003 PTC 208 (Bom)]
Alfred Dunhill Limited Vs. Mr. Girish Kumar Hatankar & Ors. [2003 PTC 469 (Del)]
Castrol Limited & Anr. Vs. Telangana Enterprises & Ors. [PTC (Suppl)(2)606(Mad)]

- 21 -
Shaw Wallace & Co v Superior Industries Ltd and Shaw Wallace & Co v Mohan Rocky
Spring Water Breweries Ltd [2007 (2) 185]27.”28

“Honest concurrent use was upheld aginst well known trademark in A B Textiles v.
Sony Corporation, [2007 (35) PTC 288 (Reg)] 29 , where the well known electronic
goods company, Sony, had opposed the registration of the mark ‘ABT Sony’ for textiles.
But the court, while accepting the ‘well known’ status of the opponents, had held that
since ‘Sony’ is a common feminine name in India and the fields and trade-channels of
operation of both these parties are different, there would be no likelihood of deception
in the minds of the public. The Court also took cognizance of various other prior valid
registrations in the same name ‘Sony’, for example, nail-polish, frames and spectacles

Measues Against Trademark Squatting:

5. Possible Action

With most of the world's customers living in dispersed markets, it is basic for all major
organizations to think about sending out their products and services, outaside the
bounds of the traditional markets. “Valeria Manunza, International Business Advisory
Assistant Manager at Dezan Shira and Associates, cautioned, ‘When a squatter has
effectively gotten a trademark, it is practically difficult to maintain a strategic distance
from huge lawful costs. On the off chance that you start lawful procedures, be set up
for a long and costly fight’.”31

Since it is exorbitant and hard to drop dishonesty trademarks, anticipation is the best
technique for managing them. It's not constantly practical for U.S. organizations to
enlist their imprints in each nation around the globe; be that as it may, U.S.
organizations should find a way to dishearten dishonesty trademark filers and settle on
educated choices on where to petition for trademark enrollments.

Organizations ought to consider enlisting their imprint in nations in which:

• Their merchandise or administrations are sold.

Shaw Wallace & Co v Mohan Rocky Spring Water Breweries Ltd [2007 (2) 185]
Journal of Intellectual Property Rights Vol 15, July 2010, pp 293-301 -
A B Textiles v. Sony Corporation, [2007 (35) PTC 288 (Reg)]
Journal of Intellectual Property Rights Vol 15, July 2010, pp 293-301 -

- 22 -
• Products or parts for their items are produced.

• Research and improvement offices are found.

• Their items go through amid transportation.

• They may grow their business later on.

• Counterfeiting is probably going to be an issue.

When an entity has chosen to seek after trademark assurance abroad, there are a few
different ways to document an application, including:

• Filing specifically with the remote national (or territorial) trademark office.

• Using a trademark application or enlistment issued by the national trademark

registration authority as a reason for document through the Madrid Protocol, which
gives a savvy and proficient path for trademark holders (people and organizations) to
secure their imprints in various nations by recording one application through the
national office e.g. USPTO32, in one language, with one lot of charges in a single cash.

Most countries provide for cancellation due to non-use to revoke trademark

registrations. In some jurisdictions challenging trademark registration on non-use
ground is possible where the registered mark has not been used for five years; others
allow for a shorter allowable non-use period of three years before cancellation
proceedings can be invoked.

5.1 Generic Methods against Trademark Squatting

Trademark opposition can be filled in the trademark office against the individual or
organization hunching down trademark amid the production time of the organization
that would keep the trademark from being enlisted effectively.

Filling an encroachment argument against the organization or the person who has
enlisted a comparative or indistinguishable imprint. As the official courtroom pursues
the standards which are set somewhere around the Paris tradition and Madrid
convention which denies the utilization of imprint if the trademark is enrolled and
known internationally

It is prescribed to the proprietor of the trademark that once they register their trademark
in the nation, their organization is enrolled they ought to apply for trademark enlistment


- 23 -
in the nations their item is being sold in. They ought to never pause; ought to at the
same time record for worldwide trademark right away.

When the individual has chosen to seek after trademark security in different nations,
there are a few different ways to apply, including:

Recording specifically with the national (or local) trademark office or to contact his
trademark lawyer to do likewise.

Utilizing a trademark enrollment application issued by the Indian Trademark Office as

a reason for application through the Madrid Protocol, which gives a financially savvy
and productive route for trademark candidate to ensure their imprints in different
gathering nations by recording one application just, in one language, with one lot of
charges in a single cash of the endorsed money referenced in the trademark application
under Madrid Protocol.

5.2 Country-specific Methods against Trademark Squatting

In China, the superseding goals of the Trademark Law amendments in 2014 were to:

• streamline techniques related with getting trademark rights;

• enhance security for legitimate proprietors; and

• alleviate issues brought about by trademark squatters.

Since the modification, point by point controls, legal elucidations and examination
principles have additionally been actualized. The first of two portions, this refresh
centers around how the modified law has been utilized to handle dishonesty filings and
takes a gander at the most recent patterns in such cases.

India, in its Trademarks Act, has given to insurance of outside trademarks concerning
the “Trans-border Reputation” guideline.

This procedure can be costly to demonstrate because of the broad technique and far
reaching needs of proof to help the cases. The Bilateral and multilateral arrangements
between states may likewise guarantee that the trademarks which are enrolled in one
locale are ensured in others. Without a doubt, it is a multifaceted issue that ought to be
tackled at each dimension.

Organizations ought to consider enrolling their imprint at the most punctual

conceivable time in nations in which:

1. Their merchandise or administrations are being sold and utilized by the buyers.

2. Items or parts for the items are being produced.

- 24 -
3. Spot or state in which innovative work offices are based or the organization is
wanting to set up.

4. The nation in which you are probably going to multiply your business later on.

5. Nations which have falsifying are probably going to be an issue.

5.3 WIPO Arbitration

Litigation is a foreign country is, after all a difficult process to enforce trademark rights.
There can be procedural diffulties and high cost burdens. An alternate dispute resolution
forum is provided by WIPO in the form for WIPO Arbitration and Mediation Center33
since 1994; which uses binding arbitration when both parties submit to its jurisdiction.

“The WIPO Arbitration and Mediation Center provides a mechanism comprised of two
sets of rules: the arbitration rules and the expedited arbitration rules. It specializes in
technology, entertainment, and intellectual property disputes. The Center provides
services to meet the need for quick and inexpensive ways of settling commercial
disputes. When administering arbitration cases, WIPO arbitration is guided by the
following priorities: flexible procedural framework, active case management,
efficiency, expertise, and integrity. In addition, the Center maintains an updated
directory of arbitrators who are experts in intellectual property law, as well as having
an understanding of technology. As a result, real trademark owners may want to use
WIPO arbitration to resolve trademark squatting disputes, rather than domestic

An Epilogue:

6. Conclusion

A number of countries are taking action at governmental levels to help organizations

take action in a concernted manner against trademark squatting across the globe. The
USPTO gives know-how to little and medium businesses on securing and upholding
licenses for trademarks as part of (IP) rights inside the United States and abroad. Till

WIPO Arbitration and Mediation Center, Dispute Resolution for the 21st Century 15 (2004)
WORLD INT’L PROPERTY ORG., WIPO Arbitration Rules, WIPO.INT, (last visited April 11, 2013); WIPO, WIPO
Expedited Arbitration Rules, WIPO.INT,
(last visited April 11, 2013).

- 25 -
sometime back, the USPTO had led 40 such preparing projects, contacting a group of
people of in excess of 4,200 individuals35.

The USPTO and different U.S. government organizations have likewise made various
magnificent IP devices and portals explicitly produced for organizations on the site. The Business Tools area of this site is intended to help secure
advancement, goad innovativeness, and market items securely at home and abroad.
Contributions incorporate " Country IPR toolkits" that contain data on securing and
authorizing IP in 19 explicit markets, an online class arrangement on IP assurance in
China, and a universal warning project that gives one a chance to ask for a free one-
hour conference with a volunteer lawyer educated in worldwide IP issues.

Much of the time, it is conceivable to enlist your trademark before you have even begun
to work together in another nation. Counsel your lawyer or utilize the available national
program like for U.S. - STOPFakes International IP Advisory Program36 to discover
which is best for you.

In spite of the existence of various Conventions aiming towards the protection of

trademarks that are “well-known” such as the Paris Convention 37 , The TRIPS
Agreement 38 , The Madrid Protocol as well as the WIPO Joint Recommendation
Concerning Well Known Marks 39 , these are not always adequate enough in all
situations to counter this problem.

India, in its Trademarks Act has provided for protection of foreign trademarks largely
hinging on to the “Trans-border Reputation” principle40. While in India "use-based"
trademark framework is pursued, this implies the trademark directly in India is viewed
as obtained by first document premise however on account of Well-known trademark
once earlier use is demonstrated its entitlement to utilize the imprint goes before from
that of the candidate.

7. Bibliography:

7.1 Sources –


The Paris Convention for the Protection of Industrial Property, 1883
Agreement on Trade Related Aspects of Intellectual Property Rights, 1995
World Intellectual. Property. Organisation, Joint Recommendation Concerning Provisions On the
Protection of Well-Known Marks, Sept. 20-29, 1999

- 26 -
2. World Intellectual Property Organization, WIPO Intellectual Property Handbook, 90 (2008)
3. Doris Estelle Long, Is Fame All There Is? Beating Global Monopolists at Their Own Marketing
Game, 40 GEO. WASH. INT’L L. REV. 123, 140 n. 44 (2008).
7. Samantha D. Slotkin, Trademark Piracy in Latin America: A Case Study on Reebok International
Ltd., 18 LOY. L.A. INT’L & COMP. L. REV. 671, 671 (1996).
9. Apple Computer Inc. vs Apple Leasing & Industries (1993) IPLR 63 (Del)
10. Milmet Oftho Industries & Ors. Vs. Allergen Inc. (2004) 12 SCC 624
13. (1996) 5 SCC 714 : 1996(16) PTC 583 (SC)
14. Global IP India -
15. Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)] – TMR Reporter:
16. Ford Motor Co. & Anr. v. Mrs. C R Borman & Anr. [2008 (2) CTMR 474 (Delhi) (DB)]
17. ITC Ltd. v. Philip Morris Products SA & Ors [2010 (42) PTC 572 (Del.)]
18. Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd. [2010 (44) PTC 25 (Bom.) (DB)]
19. Chorion Rights Ltd. v. Ishan Apparel & Ors [2010 (43) PTC 616 (Del.)] – TMR Reporter:
20. Rolex Sa vs. Alex Jewellery Pvt Ltd & Ors. [2009 (41) PTC 284 (Del)]
21. Indian Shaving Products Ltd. & ... vs Gift Pack & Anr. [(1998) PTC 698 (Del)]
22. Marica Ltd v. Madhu Gupta, I A Nos 15565 and 16243/ 2009 in CS (OS) No 2275/ 2009, High
Court of Delhi (7 April 2010)
23. Warner Bros Entertainment Inc and Anr v Harvinder Kohli and Ors, [2008 (38) PTC 185 (Del)]
24. Pizza Hut International LLC & Others Vs. Pizza Hut India Pvt. Ltd. [2003 PTC 208 (Bom)]
25. Alfred Dunhill Limited Vs. Mr. Girish Kumar Hatankar & Ors. [2003 PTC 469 (Del)]
26. Castrol Limited & Anr. Vs. Telangana Enterprises & Ors. [PTC (Suppl)(2)606(Mad)]
27. Shaw Wallace & Co v Mohan Rocky Spring Water Breweries Ltd [2007 (2) 185]
28. Journal of Intellectual Property Rights Vol 15, July 2010, pp 293-301 -
29. A B Textiles v. Sony Corporation, [2007 (35) PTC 288 (Reg)]
30. Journal of Intellectual Property Rights Vol 15, July 2010, pp 293-301 -
33. WIPO Arbitration and Mediation Center, Dispute Resolution for the 21st Century 15 (2004)
34. WORLD INT’L PROPERTY ORG., WIPO Arbitration Rules, WIPO.INT, (last visited April 11, 2013); WIPO, WIPO
Expedited Arbitration Rules, WIPO.INT,
rules/(last visited April 11, 2013).
37. The Paris Convention for the Protection of Industrial Property, 1883
38. Agreement on Trade Related Aspects of Intellectual Property Rights, 1995
39. World Intellectual Property Organisation, Joint Recommendation Concerning Provisions On
the Protection of Well-Known Marks, Sept. 20-29, 1999

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42. Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with
44. Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with
46. Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with

7.2 Words –

1. Paris Convention - The Paris Convention for the Protection of Industrial Property, 1883
2. TRIPS - Agreement on Trade Related Aspects of Intellectual Property Rights, 1995
3. WIPO Recommendation - World Intellectual Property Organisation, Joint Recommendation
Concerning Provisions On the Protection of Well-Known Marks, Sept. 20-29, 1999

8. Appendix1

Indian Trademark Law recognizes well-known trademarks and has adopted the
criteria laid down under Article 6 of the TRIPS Agreement. With Indian
Globalization Policies creating swift progress in the country, the IP laws have also
facilitated foreign investors by permitting the use of foreign brand names in India.
Investment in India is now being explored by a number of globally well-established
brands. However, there was no specific provision in the old Trademark Act for the
protection of well-known marks and for keeping a check on different infringement
issues in this market.41 The statutory definition of a well-known trademark is given
in Section 2(1)(zg) of the Trade Marks Act, 1999, (‘Act’) is -

“’well-known trade mark’, in relation to any goods or services, 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.
Further, there are provisions in the Act which lays down the factors which deals
with the various matters concerning protection of well-known trademark. They are
in the nature of explanations, which may arise in the context.
Under the Act – Section 11(6), the Registrar of Trademarks (Registrar), while
determining whether a trademark is a well-known trademark, will have to take into
account any fact which he considers relevant for determining a trade mark as a
well-known trademark including-
• the knowledge or recognition of that trademark in the relevant section of the

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public including knowledge in India obtained as a result of promotion of the
• the duration, extent and geographical area of any use of that trademark;
• 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;
• the duration and geographical area of any registration of or any application for
registration of that trademark under this Act to the extent they reflect the use or
recognition of the trade mark;
• the record of successful enforcement of the rights in that trademark, in
particular the extent to which the trademark has been recognised as a well-known
trademark by any Court or Registrar under that record.
Also, as per Section 11(7), while determining the knowledge and recognition of
the trademark in the relevant section of public as mentioned above the Registrar
will have to take account of-
• the number of actual or potential consumers of the goods or services;
• the number of persons involved in the channels of distribution of the goods or
• the business circles dealing with the goods or services to which that trademark
The law is very clear regarding the fact that if 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 the Act. Recognition Rule eliminated the requirement of the
1996 Rule that a well-known trade mark be a registered trade mark.”

“Also relevant are Sections subsections 7, 8 and 9 of Section 11. The Act states
that while determining a trademark to be well-known, the Registrar shall not
require as a condition that the trademark has been used or registered or has been
applied for registration in India. It also states it is not essential that the trademark
should also be well known to the public at large in India. Further, it is also not a
condition that the trademark is well-known or a registered trademark or the pending
registration or pending in any jurisdiction other than India.”42

“Registrar is at liberty to invite objections from the public, before declaring the
said mark as well-known trademark. If there are no such objections, then the mark
shall be advertised in the Trademark Journal and become part of the well-known
trademark list. The free for making such an application online is INR 100,000.”43
There is no offline filing facility for the said application.

Once a trademark is declared as well-known by the Registrar or by any courts, the

trademark registry while dealing with any new trademark shall not register any
similar or deceptively similar trademark that is identical or similar to the 'well-
known' trademark across all classes of goods and services. For e.g. ‘SONY’ has
been declared as a well-known trademark under the Indian law which means that
in India only Sony Corporation can use or register the mark ‘SONY’ in any class
of goods and services. Similarly, if there is an infringement proceeding, a 'well-
Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with

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known' trademark can be asserted against defendants dealing in entirely different
goods or services. Therefore, a well-known trademark is of great importance to the
trademark owners and has huge commercial implications.”

“An amendment in the Indian Trademark Rules, which have been notified as 'The
Trademark Rules, 2017' (‘Rules’) on 22nd May, 2017, has laid down the process
to be followed in India for well known trademark registration. A new procedure
for filing of an application for the determination of trademark as well-known by
the Registrar has been introduced through this. Prior to enactment of any such Rule,
the process of declaring a trademark as well-known was solely decided by the
Courts or Tribunals, resulting out of a full-fledged contested litigation or legal
proceeding. A mere claim that the trademark is well-known by the owner of the
trademark is not sufficient.
Under the notified Rules, the trademark owner can now file an application for
declaration of their trademark as a well-known trademark before the Registrar by
making a payment of prescribed fee of INR 1 lakh (USD 1550 approx.). While
reviewing such an application, the Registrar would determine whether the said
trademark is to be considered as a well-known trademark or not based on the
provisions laid down in the Act as mentioned above. Under the Rules the trademark
owner can now directly proceed to protect his trademark as well-known, without
initiating any infringement or opposition proceedings. Though the Rule does inflict
certain duties on the general public as they are free to object and such objections
are to be filed within 30 days from the date of invitation of such objection.”

“In order to further streamline the procedure for filing of an application for well-
known trademark, a notice has been issued by the concerned authority. The notice
includes certain requirements to be fulfilled by the applicant while filing the
application for inclusion of a trademark in the list of well-known trademark.
The general guidelines include:
1. The application should be accompanied with following set of documents:
Statement of case:
This should describe the applicant's rights in the trademark and also the applicant's
claim that the trademark is a well-known trademark, clearly and in a proper manner.
Evidence in support:
Evidence in support of the applicant's rights and claim is to be filed along with the
application. In other words the application should be accompanied with:
1. Evidence as to use of trademark.
2. Any applications for registration made or registration obtained.
3. Annual sales turnover of the applicant's business based on the subject
trademark duly corroborated.
4. Evidence as to the number of actual or potential customers of goods or services
under the said trademark.
5. Evidence regarding publicity and advertisement of the said trademark and the
expenses incurred.
6. Evidence as to knowledge or recognition of the trademark in the relevant
section of the public in India and abroad.
Details of successful enforcement of rights:
If there are any enforcement rights relating to the said trademark in particular extent
to which trademark is recognized as well-known trademark by any Court in India
or Registrar, those details have to be clearly stated.

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Copy of the Judgment:
If there is a judgment by any Court in India or Registrar, where the trademark is
determined as well-known trademark, such judgment should be given with the
application under rule 124.
The size of the document:
The documents 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 receipt of the application, the controller will consider the claim of the
applicant on the basis of documents submitted.
2. The office may publish the details of trademark proposed to be included in the
list of well-known trademarks.
3. Any person, who wants to object the inclusion of the said trademark in the list
of well-known trademarks, may file his objection in writing to the Registrar stating
out the reasons clearly for his objection and also the supporting documents, if any
4. Copy of the objection will be communicated to the applicant for comments
within stipulated time.
5. Office will communicate the decision in respect of the objections to the parties
6. Final decision of the office regarding inclusion of the trademark in list of well-
known trademarks will be communicated to the applicant.
7. In case the mark is determined as well-known, the same will be notified in the
Trade Marks Journal and included in the list of well-known trademarks made
available on the official website.”44

Thus, now when an applicant wants to file an application for getting their Trade
Mark registered as a Well-Known mark, following are the summarized steps:-
1. Form TM-M: The form for filing the said application is Form TM-M.
“The registration status of the trademark does not affect this application. In order
to get one’s mark registered as a well-known trademark there needs to be an
application for registration of the said trademark filed in India.
2. The fees for Form TM-M is INR 1,00,000
3. Application should be accompanied with the evidence towards the use of the
Trademark over a long period of time.
4. Other documents supporting its claims that the mark has a unique reputation in
the mind of the consumers. It should be presented at the time of application filing.
5. The Registrar, after receiving application, can give relative grounds of refusal of
registration and/or he may also call for further documents/evidences to reach a
conclusion whether the mark is a wellknown trademark.
6. The Registrar before declaring a mark as a well-known trademark would invite
objections from the general public. Publication in Journal – Once the trademark is
declared a well-known trademark; it would be published in the journal.
7. A well-known mark shall be also included in the list of well-known trademarks
maintained by the Registrar.
8. The mark, if found to be erroneously included in the list and not justified, may

Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with

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even be removed after providing an opportunity to the party for a personal hearing
adhering to the principles of natural justice.”45
“The debate that arose is whether Rule 124 is constitutional. Since the Trade Mark
Rules are delegated to their parent legislation The Trade Marks Act, 1999, they are
bound to draw their legitimacy from the parent statute. In this case, however, the
Rules do not delegate to the Central Government the power to create an entirely
new procedure to recognize well known trademarks. The rule making power of the
Central Government under Section 157 of the Trade Marks Act, 1999 is silent on
the issue of well known trademarks. There is a residuary provision in Section 157
(xli) that gives the Central Government the power to make rules for ‘any other
matter which is required to be or may be prescribed’. However, the residuary
provisions are governed by two principles: The first principle is that delegated
legislation cannot be in conflict with the provisions of the parent legislation.
Secondly, an essential legislative function cannot be delegated by Parliament to the
The rule reflects an entirely new policy to recognize ‘well-known’ trademarks
through a procedure that is not an adversarial proceeding (as is the case currently).
In fact, the new procedure is in conflict with the adversarial procedure recognized
in Section 11 for a trademark to be recognized as well known. Needless to say that
a trade mark having brand value, reputation and goodwill in India can now get itself
conveniently included in the list of well-known trademarks to safeguard itself from
future probable infringements and claim benefits as provided to other well-known
Till mid-2017, there were 81 declared well-known trademarks in the list maintained
by the Trademark Registry. By the introduction of one step procedure for
determining a trademark as well-known, the list has expanded quickly and
substantially. Thus trademark owners in India or overseas can take advantage of
this to have their trademarks accepted and declared as well-known in India so that
their trademarks are protected from being infringed or passed off by any
unauthorized person. At the same time, the Registrar ought to follow a cautious
approach while considering applications for determination of trademarks as well-
known, since once a trademark is declared as well-known, it will preclude any other
party from using such trademark (or even similar to it) in respect of other goods
and services.
However, the new Rule 124 gives immense power in the hands of the Trade Mark
Registry with this new procedure. This procedure has a lot of room for several
human errors, intentional or unintentional. The other drawback of the new rule is
that it is vague and its meaning is ambiguous. The entire point of granting ‘well-
known’ trademark such vast protection is that it has attained recognition amongst
a large section of the public not just a ‘relevant section of the public’.
Unlike the Section 11 procedure which required an opposition, rectification or
infringement proceeding to trigger a adjudication on whether the trademark is well-
known, Rule 124 allow a trademark to be recognized as well known by simply
making an application to the Registry. The requirement to ‘invite objection’ is
fundamentally different from an opposition or rectification hearing because it does
not guarantee a right to be heard. This entire procedure is alien to the scheme of
the Trade Marks Act, 1999. These provisions of the Trade Mark Act needs to be
amended properly keeping in mind the complexity and awareness of this new


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procedure. No person should get an undue advantage”.46

******** END ********

40 Trade Marks Act, 1999 and Trade Marks Rules, 2017; along with

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