SEMESTER VIII, B.A, L.L.B. (Hons.

Law of Trademark and Geographical Indications Assignment

For the Academic year (2022-2023)

Prepared & Submitted By Submitted to

ROSHI SURELE Prof. Taruna Jakhar

[19BAL041] Institute of Law, Nirma University

REVISITING THE JURISPRUDENTIAL ADVANCEMENTS OF WELL
– KNOWN TRADE MARKS IN INDIA

ABSTRACT

Certain trademarks acquire recognition in such a way that they represent themselves as a mark
of identification or a symbol of regard, pertinent to the good or service. In legal terms, such
trademarks are termed well-known trademarks. In India, the journey of defining well-known
marks finds its place long back. Before the formulation of statutory provisions, the well-known
marks were safeguarded through common law principles such as injunction, passing off, etc.
The recent development in the jurisprudence of well-known trademarks has again demurred
the importance of understanding the evolution of a well-known trademark as a concept from
finding its place in judgments to having a proper definition in statutory provision. The recent
development related to the Trademark rules 2017 has now opened the way for the
determination of a trademark as a well- known trademark directly through a procedure.

This paper, primarily, focuses on the need to bring the present trademark 2017 rules and the
same will be done by going into the jurisprudence of Well-known trademarks in India. Whether
the present framework governing a well-known trademark has sufficed to cure the problems
addressed by different judgments would be a focus of this paper. The analysis thus mainly takes
into consideration judgments, international treaties, and statutes, focusing on India.

RESEARCH QUESTIONS

1. What is the jurisprudence of well-known trademarks in India?

2. What difference is created at every stage of development of the jurisprudence of well-
known trademarks in India?
3. What is the current framework formulated based on jurisprudence for well-known marks?
4. Whether the present framework cures the lacunae, pointed in different judgments?
5. What is the legislative intent behind enacting trademark rules, 2017?

RESEARCH OBJECTIVES

1. To revisit the legal and regulatory framework of well-known trademarks in India.

2. To analyze the judgments that led to the development of well-known trademarks in india.
3. To judicially interpret the provisions stipulated under trademark Act forming a part of
jurisprudence.
4. To suggest reforms in the current legal framework.

LITERATURE REVIEW

I. Latha R Nair, “Tracking the protection of well-known trademarks in India: A

befuddled Path to Nirvana?,” International Trademark Association (Sep.- Oct.
2011).1

The article has compared attaining a well-known trademark as attaining Nirvana,

considering protection of a well-known trademark deviates from the traditional
standard and objectives of trademark protection. The article has critically reviewed the
protection of well-known marks in India to date, by examining the evolving case law
pronounced from time to time under the old trademark statute, the Trade and
Merchandise Marks Act, 1958 (the TMM Act) and the new statute, the TM Act, 1999.
The article also analyzed the Articles of TRIPS and PARIS Convention and the same
has been analyzed with the Indian statue.

The article critical examination of the jurisprudence of well-known trademarks has

helped me to achieve my research goals and pave a path of further research.

II. Padmasri Bhavani Y, “Understanding the nuances of well – known marks: an

Indian perspective,” NLSIU IP Centres, (Dec. 30, 2020)2

The present article presents a historical purview to the development of the concept of
well- known trademarks through various legislations. Before the introduction of any
specific legislations for trademarks, the provisions pertaining to trademarks were
encompassed within Indian Penal Code, 1860. Subsequently, a new legislation which
went by the name Indian Merchandise Act, 1886 defined the term trademark. However,
the term Well-known trademarks was not defined in the Act of 1940, provisions relating

1
Latha R Nair, “Tracking the protection of well-known trademarks in India: A befuddled Path to
Nirvana?”,International Trademark Association (Sep.- Oct, 2011),
https://www.knspartners.com/UploadFile/Articles/10042018_115922_Well-known%20marks.pdf
2
Latha R Nair, “Tracking the protection of well-known trademarks in India: A befuddled Path to
Nirvana?”,International Trademark Association (Sep.- Oct, 2011),
https://www.knspartners.com/UploadFile/Articles/10042018_115922_Well-known%20marks.pdf
 to special protection to these trademarks were laid down. The act of 1956 specifically
provided defensive protection to the well-known trademarks and repealed its
predecessors, Indian Merchandise Act and the Act of 1940.

III. Nikhil Mishra, “Significant Development With Regard To Well-Known

Trademarks Under The Trade Marks Rules, 2017 And Contentious Issues
Relating To It,” Mondaq (March 02, 2022)3

The article has discussed the recent development in the jurisprudence of the well-known
trademarks. The trademark rules 2017 introduced a procedure in relation to determining
a trademark as a well-known trademark. The article has emphasized on the money and
time consuming procedure before the enactment of the 2017 rules. Further, contentious
issues are also addressed in regard to the 2017 rules, one of the examples of which is,
whether inclusion of a trademark in the List of Well-Known TradeMarks when the trade
mark has already been declared as well-known by a court.

This article has helped me to know regarding the recent development in jurisprudence,
in lieu of which I am not only going to include the prior judgments which helped in
establishing a well-known trademark but also further advancements in the concept of
well- known trademark.

IV. Akhil goyal, “Time to Revisit the concept of Well-Known trademarks in India,”
The Daily guardian (Jan. 15, 2021)4

The author has focused on the history of well-known trademarks in India. Navigating
through the Paris Convention to TRIPS and then how in lieu of these conventions and
judgment pronouncement. India made legislative changes, focusing on the Trademark
and Merchandise Act, 1956, and Trademark Act 1999. The author while addressing the
well- known Trademark suggested it as a concept introduced with a progressive view
as it eventually promoted globalization. Further the author emphasized on the

3
Nikhil Mishra, “Significant Development With Regard To Well-Known Trademarks Under The Trade Marks
Rules, 2017 And Contentious Issues Relating To It,” Mondaq (March 02, 2022),
https://www.mondaq.com/india/trademark/1167442/significant-development-with-regard-to-well-known-trade-
marks-under-the-trade-marks-rules-2017-and-contentious-issues-relating-to-it
4
Akhil goyal, “Time to Revisit the concept of Well-Known trademarks in India,” The Daily guardian (Jan. 15,
2021), https://thedailyguardian.com/time-to-revisit-the-concept-of-well-known-trademarks-in-india/
 importance of the well-known marks as it introduced different concepts such as
dilution.

V. Sonal Sodhani, “All You Need To Know About "Well-Known Trademarks"”,

Mondaq, (May 22, 2019)5

The article presents a comparative analysis to the old as well as new approach adopted
by the Indian Judiciary towards the concept of well-known trademarks. Certain
landmark judgments such as that of Rolex Sa and Daimler Benz are discussed for such
comparison. The article also discusses Rule 124 of the Rules of 2017 which provides
specific protection to the concept of well-known trademarks and the intricacies which
exist even today.

VI. Well-known Trademarks, SS. RANA & Co.6

The present article has analyzed the Trademark Act, 1999, emphasizing majorly on the
provisions relating to the concept of well-known trademarks. The article further
discusses the stance of Indian Courts in this aspect. A few landmark judgements of the
Supreme Court which are discussed here are Daimler Benz, Whirlpool Co. and Rolex
Sa.

5
Sonal Sodhani, “All You Need To Know About "Well-Known Trademarks"”, Mondaq, (May 22, 2019),
https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks
6
Well-known Trademarks, SS. RANA & Co., https://ssrana.in/ip-laws/trademarks-in-india/well-known-
trademarks-
india/#:~:text=The%20Indian%20Trademark%20Law%20accords,national%20and%20cross%20border%20rep
uta tion
INTRODUCTION

In every country with an intellectual property framework, including India, trademark law has
been a crucial component. The Trade Marks Act of 1999 established a number of novel ideas
and rules, including the acceptance of well-known trademarks, which is now acknowledged as
a crucial part of the legal system. Compared to conventional trademarks, well-known
trademarks are thought to be of a higher order and offer greater protection. Because of their
repute, benevolence, and particular character, they have been granted a special status.

But throughout time, there have been substantial modifications to India's legal system that
oversee famous trademarks. The development of jurisprudence on famous trademarks as a
result of several landmark decisions has had a significant impact on the legal system. Despite
the improvements, there are still holes and weaknesses in the existing legal system that require
fixing.

The goal of this study is to review legal developments involving well-known trademarks in
India. The goal of this article is to examine the legal and regulatory environment surrounding
well-known trademarks as well as the judicial interpretation of the trademark act's
requirements. The essay analyses the court decisions that influenced the creation of well-known
trademarks and makes recommendations for changes to the current legal system.

LEGAL AND REGULATORY FRAMEWORK OF WELL-KNOWN TRADEMARKS IN INDIA

The legal and regulatory framework of the Protection of Well-Known Trademarks in India is
as follows: -

1. Trade Marks Act, 1999

A number of new laws regarding trademark registration and protection were included by
the Trade Marks Act of 1999, which amended the Trade and Merchandise Marks Act of
1958. According to the Act, a trademark is a designation that can differentiate the products
or services of one person from those of others and can be expressed graphically.

2. Well-Known Trademarks
 The Trade Marks Act of 1999's Section 11(6) first established the idea of well-known
trademarks. This clause states that a trademark might be considered well-known in India
if it has built a solid reputation there or outside. The Act also offers a non-exhaustive list
of elements that may be taken into account for determining a trademark's repute. These
considerations include the duration, scope, and geographic region of any trademark usage,
the volume of sales of the products or services, the volume of publicity and advertising,
and the number of existing or potential customers.

3. Protection of the Well-Known Trademarks

Well-known trademarks in India are given substantial protection under the Trade Marks
Act, 1999. Even if the goods or services are different, registration of a trademark that is
identical to or confusingly similar to a well-known brand is prohibited by Section 11(6) of
the Act. According to Section 29(4) of the Act, using a trademark that is identical to or
confusingly similar to a famous brand in connection with any goods or services constitutes
trademark infringement of the famous trademark.

The protection of well-known trademarks is also guaranteed by other laws, such as the
Indian Penal Code and the Consumer Protection Act of 2019, in addition to the Trade
Marks Act of 1999. Unauthorised trademark use is a crime in accordance with the Indian
Penal Code. Consumers are protected from unfair business practises, such as the use of
false or deceptive trademarks, under the 2019 Consumer Protection Act.

ANALYSIS OF JUDGEMENTS ON WELL-KNOWN TRADEMARKS IN INDIA

In India, there have been a number of significant instances that have shaped the law around
famous trademarks. The Amritdhara Pharmacy case 7was one of the first to recognise the idea
of a trademark's reputation across borders. In this decision, the Supreme Court ruled that if a
trademark has built a strong reputation in India or around the world, it can be considered well-
known in India even if it is not registered there.

Another significant case is N.R. Dongre v. Whirlpool8, which determined that it is the
claimant's responsibility to provide evidence that their trademark is well-known in India. The

7
Amritdhara Pharmacy vs Satyadeo Gupta, 1963 AIR 449.
8
N.R. Dongre v. Whirlpool, 996 PTC (16) 583 (SC).
court also established a few criteria for figuring out if a trademark is well-known in India,
including the volume of advertising and publicity, the length of time the brand has been in use,
and the geographic scope of its usage.

In the context of well-known trademarks, the case of Toyota Jidosha Kabushiki Kaisha v.
Prius Auto Industries Ltd.9 is also relevant. The Delhi High Court ruled that the plaintiff's
trademark "Prius" had developed a significant reputation in India and that the defendant's use
of the word "Prius" for its goods was likely to cause confusion and deceit among the public.

JUDICIAL INTERPRETATION OF TRADEMARK ACT AND JURISPRUDENCE

This chapter looks at how the Trade Marks Act's provisions have been interpreted by the courts
and how it has influenced Indian jurisprudence. This chapter will analyse some of the important
judgements that have contributed to the jurisprudence of well-known trademarks in India.
Courts have had a considerable impact on how the Act's provisions are interpreted.

1. Interpretation of Section 2(1)(zg)

According to Section 2(1)(zg) of the Trade Marks Act, a well-known trademark is one that
has gained widespread recognition among the general public to the point where using it in
connection with any goods or services would likely be interpreted as signifying a business
relationship between those goods or services and the mark's owner. According to how the
courts have interpreted this clause, well-known trademarks in India are protected to a certain
extent.

The Supreme Court ruled in Zee Telefilms Ltd.. v. Sahara India Co. Corp. Ltd10. that the
use of a well-known trademark for unrelated goods is not permitted since it could lead to
consumer misunderstanding or deceit. The court also established a few criteria for figuring
out if a trademark is well-known, including the volume of advertising and publicity, the
length of time the brand has been in use, and the geographic scope of its usage.

Similar to this, the Delhi High Court ruled in Toyota Jidosha Kabushiki Kaisha v. M/S
Prius Auto Industries Ltd11. that the defendant's use of the word "Prius" for its goods was

9
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd, 2018 (73) PTC 1.
10
Zee Telefilms Ltd.. v. Sahara India Co. Corp. Ltd, 2001 1 CALLT 262 HC.
11
Supra note 9.
 likely to confuse and mislead the public due to the plaintiff's trademark "Prius" having a
significant reputation in India. In accordance with Section 2(1)(zg) of the Act, the court
further determined that the plaintiff's trademark was a well-known trademark.

2. Interpretation of Section 11(6)

According to Section 11(6) of the Act, a trademark might be considered well-known in India
if it has built a solid reputation there or elsewhere. According to how the courts have read
this clause, a trademark in India must be well-known to the general public as well as the
relevant trade circles.

The Delhi High Court determined that the trademark "Intel" was a well-known trademark
in India in the matter of AZ Tech (India) v. Intex Technologies (India) Ltd12. because it
had a reputation that went beyond the relevant trade circles and was known to the general
public in India. As a result of its similarity to the plaintiff's trademark "Intel" the court
determined that the defendant's use of the trademark "Intellic" was likely to mislead and
confuse the public.

Similar to this, the Delhi High Court determined in the case of L'Oréal v. Revlon13 that the
trademark "L'Oréal" was a well-known trademark in India since it had built up a significant
reputation both domestically and internationally. The defendant's use of the name "L'Oréal
Paris" for its goods was found to be likely to confuse and deceive the public due to its
similarity to the plaintiff's trademark "L'Oréal," the court further determined.

3. Interpretation of Section 29(4)

According to Section 29(4) of the Act, using a trademark that is identical to or confusingly
similar to a famous brand in connection with any goods or services constitutes trademark
infringement of the famous trademark. According to how the courts have read this clause,
using a well-known trademark for products or services that are unrelated to those for which
it is registered might nonetheless constitute trademark infringement.

12
M/S Az Tech (India) & Anr. vs M/S Intex Technologies (India), 2017(70)PTC118(Del).
13
L'Oréal v. Revlon, Case C-235/05 P.
 Similar to this, the Delhi High Court ruled in Titan Industries Ltd. v. M/S Ramkumar
Jewellers14 that the defendant's use of the word "Tanishq" for its goods was likely to confuse
and deceive the public because the plaintiff's trademark "Tanishq" had built up a significant
reputation in India. The plaintiff's well-known trademark was being violated, the court said,
by using the term "Tanishq" for unrelated items.

4. Interpretation of Section 34(1)

A registered trademark is not violated by the use of another registered brand in connection
with products or services that are the same as or similar to the goods or services for which
the trademark is registered, according to Section 34(1) of the Act. The courts, however, have
construed this clause to suggest that even when used for unrelated goods or services, the use
of a well-known brand by another registered trademark might nevertheless constitute an
infringement of the well-known trademark.

In the case of N.R. Dongre v. Whirlpool Corporation15, the Bombay High Court determined
that because the plaintiff's trademark "Whirlpool" had established a strong reputation in
India, the defendant's use of the name "Whirlpool" for its products was likely to cause
confusion and deception among the public. The court determined that the plaintiff's well-
known trademark had been violated by using the name "Whirlpool" for unrelated items.

5. Judicial Interpretation of Jurisprudence

The judiciary has significantly influenced Indian law regarding famous trademarks. The
rules of law relating to well-known trademarks have developed as a result of how the courts
have interpreted the Act's provisions. The degree and scope of protection provided to well-
known trademarks, as well as the situations in which using a well-known trademark can
constitute an infringement, have all been established by the courts.

REFORMS IN LEGAL FRAMEWORK

Various groups have criticised the current legal framework in India for the protection of well-
known trademarks. It has been determined that the framework is insufficient for effectively
protecting well-known trademarks, which causes instances of misuse and dilution of the

14
Titan Industries Ltd. v. M/S Ramkumar Jewellers, 2012 (50) PTC 486 (Del).
15
Supra note 8.
reputation and goodwill connected with such trademarks. We will talk about some of the legal
reforms that could be made to solve these problems in this chapter.

Need for Reforms

The fact that the standards for assessing whether a trademark is well-known are ambiguous and
subjective is one of the main critiques levelled at the current legal system. There is a need for
a precise and impartial set of standards that may be applied to decide if a trademark meets the
requirements for being well-known. This would facilitate the application of the law relating to
well-known trademarks in a consistent and understandable manner.

The degree of protection given to well-known trademarks is another area that needs
improvement. Well-known trademarks are only protected under the current system in
connection to products or services that are comparable to them. The protection should be
expanded to include the use of well-known trademarks in connection with unrelated goods or
services when doing so is likely to confuse consumers or damage the reputation of the brand
in question.

A remedy for the misuse or dilution of well-known trademarks is not yet provided by the legal
system. A comprehensive range of remedies that can be applied to cases of trademark
infringement or dilution are required.

Reforms Suggested

1. Clear Criteria for Determining Well-Known Trademarks16

It is possible to alter the Trade Marks Act to provide a precise and impartial set of
standards for figuring out whether a trademark meets the definition of well-known. The
criteria may take into account things like how long and how extensively a trademark
has been used, how far a trademark's reputation has spread geographically, and how
well-known a trademark is among the relevant public.
2. Extension of Scope of Protection17

16
Kumar, V. (2019). Protection of Well-known Trademarks in India: A Critical Analysis. International Journal of
Innovative Technology and Exploring Engineering, 8(11), 3684-3692.
17
Pandey, V. K., & Nema, R. K. (2017). Analysis of Legal Protection to Well-Known Trademarks in India.
International Journal of Advance Research and Development, 2(6), 61-68.
 It is also possible to change the Trade Marks Act to broaden the protection offered to
well-known brands. When using well-known trademarks in connection with unrelated
goods or services is likely to lead to confusion or dilute their reputation, the Act can be
changed to give protection for those trademarks.
3. Remedies for Misuse and Dilution18
The Trade Marks Act can be changed to include a wide range of remedies that can be
applied to cases of trademark infringement or dilution. Injunctions, financial losses, and
an accounting of profits are all possible remedies.

CONCLUSION

In conclusion, major jurisprudential changes have been made to India's legal system for
protecting well-known trademarks over the years. These changes are the outcome of numerous
judicial decisions that have contributed to the creation of a thorough legal framework for the
protection of well-known trademarks in India.

The Trade Marks Act of 1999 and the Trademark Rules of 2017 serve as the main legal
foundation for the protection of well-known trademarks in India. The Act and Rules establish
procedures for the registration of trademarks and the defence of trademark owners' rights. The
Act also acknowledges the idea of famous trademarks and offers legal protection for them.

The legal advancements surrounding well-known trademarks have aided in the clarification of
a number of legal issues, including the standards used to identify well-known trademarks, the
extent of the protection provided to well-known trademarks, and the remedies available in
infringement cases.

The acknowledgment of the notion of trans-border reputation has been one of the major
jurisprudential advancements pertaining to well-known trademarks in India. This principle
recognises the goodwill and reputation connected to a trademark in other countries and offers
protection for such things in India.

The concept of trademark dilution has received great attention, which is another important
development. This idea acknowledges that, even if an unlicensed use of a well-known

18
Sharma, A. (2019). Legal Protection of Well-Known Trademarks in India: Issues and Challenges. International
Journal of Research and Analytical Reviews, 6(3), 462-468.
trademark does not cause consumer confusion, it can still damage the trademark's reputation
and goodwill. Due to this acknowledgment, well-known trademarks now enjoy protection that
goes beyond the conventional notion of likelihood of confusion. However, there are still some
problems that need to be resolved despite the jurisprudential advancements in the field of
famous trademarks. The lack of clarity in the standards for identifying well-known trademarks
is one of the primary problems. Because the standards for identifying well-known trademarks
are arbitrary and open to interpretation, their implementation is inconsistent.

The narrow range of protection given to well-known trademarks is another problem. The
narrow scope of protection given to well-known trademarks might cause the reputation and
goodwill attached to the mark to be diluted in connection to goods and services that are not
related. A detailed list of remedies that can be applied to cases of trademark infringement or
dilution is also required. There are no particular remedies for incidents of misuse or dilution of
well-known trademarks under the current legal system.

In order to address these problems, the legal framework in India for the protection of well-
known trademarks can be changed to include a comprehensive set of remedies for instances of
well-known trademark misuse or dilution, as well as a clear and objective set of criteria for
identifying well-known trademarks.