India – Well Known Trademarks – Recent Trends and Case Law

First published in APAA e-Newsletter (Issue No. 44, December 2024)

Introduction

The significance of well-known trademarks in India today is both profound and multifaceted, impacting the legal, commercial, and consumer landscapes.

The concept is important as it offers a high level of protection that extends even beyond the specific goods or services for which the trade mark is registered.

The 2017 Trade Marks Rules in India simplified the process for recognizing well-known marks, allowing brand owners to request recognition directly from the Registrar of Trade Marks. This article explores understanding well-known trademarks, criteria for determining well-known marks in India and some recent key court decisions.

Understanding Well-Known Marks and Their Importance

The Trade Marks Act, 1999, provides specific guidelines for the registration and protection of well-known trademarks. According to Section 2(1)(zg) of the Act, a well-known trademark is one that is known to a significant section of the public in India. Factors influencing its recognition include the volume of sales, the share of the market, and the value of the trademark.

The importance of well-known trademarks cannot be overstated, as they enjoy broader protection than ordinary trademarks. This includes being protected even in the absence of registration, preventing similar marks from being registered, and offering greater recourse against infringement.

Criteria for Determining Well-Known Marks

Section 11(6) of the Act outlines criteria for determining whether a trademark can be considered well-known:

Public Knowledge and Recognition: The extent to which the public, particularly consumers, associates the mark with a particular product or service.
Duration, Extent, and Geographical Reach: The time over which the mark has been used, its reach across India and globally, and the marketing associated with it.
Promotion and Advertisement: The level of marketing efforts, including sponsorships and advertising, to create awareness and recall.
Record of Registration: Other countries’ recognition of the mark as well-known.
Previous Legal Cases: Successful enforcement of the mark in previous infringement or opposition cases.
With growing consumer awareness and the proliferation of global brands, India has seen a surge in applications and Court cases around well-known trade marks.

Recent Trends

In recent years, we have seen a significant increase in the recognition of well-known trademarks in India.

As indicated, the current Rules, which has been in operation since 2017 allows the Trade Marks Office to recognise a trade mark as well-known, upon careful examination of an application filed with all the relevant documents alongwith the requisite fee. Currently about 281 trade marks stand recognised as well-known in India. The Office maintains a register containing such well-known trade marks which is readily available to the public. The list may be viewed by clicking on https://tmrsearch.ipindia.gov.in/tmrpublicsearch/List_of_Well-Known_Trade_Marks_as_of_18.03.2024.pdf .

Boom of social media and ecommerce in India has also affected trademark protection. Brands are increasingly relying on digital platforms to market their products, which brings the risk of dilution and misuse of well-known trademarks. Most companies are closely monitoring online marketplaces for counterfeit or unauthorized uses of their marks. Consequently, right holders are becoming more proactive in litigation to protect their rights in the digital realm.

Notable Case Laws

Cadbury India Ltd. v. D. D. M. C. Associates (2018)

The Bombay High Court recognized Cadbury India’s distinctive purple packaging as part of its well-known trademark. The court granted an injunction against D. D. M. C. Associates, which attempted to register a similar mark. The ruling reinforced the concept that protections for well-known trademarks extend beyond situations involving identical goods to include cases of dissimilar goods, especially where there is a likelihood of consumer confusion.

Puma SE v. PUMA Football Club (2020)

In this significant case, the Delhi High Court ruled in favour of Puma SE, recognizing the global sportswear giant as a well-known trade mark. This decision establishes important precedents regarding the protection of well-known trademarks in India, particularly in cases where a well-known brand faces competition or potential infringement from entities in unrelated sectors. It underscores the principles of trademark protection, such as the prevention of consumer confusion and the dilution of brand identity, thus reaffirming the judiciary’s role in safeguarding the integrity of well-established trademarks.

Burberry Limited v. T. S. Retail Pvt. Ltd. (2021)

In 2021, Burberry, known for its luxury apparel, successfully obtained an injunction order from the Delhi High Court, against T. S. Retail, which was selling goods under a similar brand name. The Court reaffirmed Burberry’s status as a well-known trademark, stating that it was widely recognized among the relevant consumers irrespective of the nature of the goods. This case highlighted the importance of consumer perception in determining well-known status.

Sony Corporation vs. N.V. Akai (2020)

The Delhi High Court ruled in favour of Sony, granting protection to its well-known trademark against the use of “Akai” by the defendant. The Court emphasized that well-known marks deserve broader protection, even for goods that are not identical.

University of Illinois v. Nimesh Bhardwaj (2022)

The University of Illinois filed a case against an Indian entrepreneur for misusing its name and logo to promote educational services. The Delhi High Court ruled in favour of the University, acknowledging its mark as well-known, thus prohibiting any misleading representation. This ruling underscored those educational institutions, too, have well-known trademarks that require protection.

Hindustan Aeronautics Limited (HAL) vs. Hussain & Ors. (2022)

The Supreme Court of India addressed the issue of well-known trademarks in the context of public sector undertakings. It affirmed HAL’s well-known status, reinforcing how trademarks associated with public entities must be protected to maintain their reputation.

Red Bull GmbH vs. Red Bull Energy Drink (2023)

The Supreme Court ruled in favour of Red Bull GmbH, protecting its well-known trade mark. This case set a significant precedent regarding trademark rights, particularly in the beverage industry.

Starbucks Corporation v. D. B. Realty Ltd. (2024)

Starbucks sought to protect its trademark against a real estate company that was allegedly trying to benefit from the Starbucks brand equity. The Bombay High Court recognized Starbucks as a well-known brand and granted an injunction against the use of a similar name in the property sector, showcasing the extensive protection afforded to well-known trademarks.

Conclusion

The landscape of well-known trademarks in India has evolved significantly over the recent years, characterized by a growing appreciation for the importance of brand protection. Recent case laws illustrate the judiciary’s supportive stance in recognizing and enforcing the rights associated with such well-known trademarks, thereby reinforcing brand integrity. As India continues to strengthen its IP framework, the protection of well-known trademarks will remain a critical area of focus.

Suhrita Majumdar

With about 16 years of experience in the field of trade marks, Ms. Majumdar handles trade mark portfolios for clients from sectors like fast moving consumer goods, food and beverages, engineering, healthcare and medical instruments, clothing and footwear, among others. She advises on all aspects of trade mark laws ranging from trade mark clearance, applications, prosecution issues, oppositions, post-registration activities and cancellation actions. She is also an active member of the team working on foreign trade mark matters. Ms. Majumdar is an active member of the litigation team and also handles domain dispute cases and enforcement actions before the Customs Office. Ms. Majumdar continues to be a part of several IP awareness programs across India. She is a member of the INTA, ECTA and APAA. She had chaired the INTA FWKM MEASA Sub- Committee for the term 2015-2017, has been an active member of the INTA TOP-C Committee for the term 2019-2021 and is currently a part of the INTA FWKM Committee and the ECTA Anti-Counterfeiting Committee.

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