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 trade marks, 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:

1. Public Knowledge and Recognition: The extent to which the public, particularly consumers, associates the mark with a particular product or service.
2. 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.
3. Promotion and Advertisement: The level of marketing efforts, including sponsorships and advertising, to create awareness and recall.
4. Record of Registration: Other countries’ recognition of the mark as well-known.
5. 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

Red Bull AG v. C. Eswari and Ors., [2018 SCC OnLine Del 13145] (Decided on December 06, 2018)

 

The Delhi High Court declared the “double bull (device)” /  and the “single bull (device)” /  or  of Red Bull AG as well-known trade marks. It was noted that these marks are prominently used across a range of products and services and covers a broad geographical area within India as Red Bull AG commands nearly 97% of the energy drink market in India. Moreover, the scale of operations demonstrated that the double bull (device) trade mark and the single bull (device) trade mark enjoy strong public recognition.

Levi Strauss and Co. v. Imperial Online Services Private Limited and Ors. [2022 SCC OnLine Del 5046] (Decided on March 24, 2022) 

The Delhi High Court has recognized the ‘Arcuate Stitching Design’ used by Levi Strauss & Co. on its jeans, pants, and trousers as a well-known trade mark. The Court noted that the earliest registration of this design dates back to 1943 in the United States. Since then, Levi Strauss & Co. has obtained trade mark protection for the design in several countries, including India. In view of its continuous and extensive use on Levi’s apparel for over 150 years, combined with its widespread recognition, the Court held that the ‘Arcuate Stitching Design’ has acquired the status of a well-known trade mark.

DHL International Gmbh v. DLH Express Services Private Limited [2022 SCC OnLine Del 1353] (Decided on April 22, 2022)

The Delhi High Court held DHL to be a well-known mark in accordance with the settled legal position on well-known marks. The DHL International Gmbh’s global and continued use in India, its registrations, third-party recognition, and various enforcement actions in favour of the mark were recognized in making the decision. As a result, the status of well-known was granted particularly in logistics, freight, courier, and international money services to the DHL International Gmbh.

Glaxo Group Limited. and Anr. v. Manoj Kumar Jain and Ors. [2023 SCC OnLine Del 5525] (Decided on September 5, 2023) 

The Delhi High Court declared “BETNESOL” as a well-known mark on the basis of the use of the mark since 1960’s in relation to pharmaceutical, medicinal, and allied products.

New Balance Athletics Inc. v. New Balance Immigration Private Limited [2023 SCC OnLine Del 7009] (Decided on November 2, 2023)

The Delhi High Court determined the marks “NEW BALANCE” and “NB” to be well-known marks, recognising the popularity of the mark among the public and its global reputation due to its use in more than 120 countries. While determining the well-known status of the mark, the court clarified that New Balance Athletics Inc. shall have no exclusive rights over the words “NEW” and “BALANCE” individually.

Burger King Company LLC v. Virendra Kumar Gupta and Anr., [2023 SCC OnLine Del 7735]. (Decided on November 29, 2023)

The Delhi High Court held the mark “BURGER KING” to be a well-known trade mark. The decision was made primarily due to the long period, during which the “BURGER KING” mark and its variations had been used for fast foods specially for Burgers.

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.