4 August, 2015
As per the recent direction of the Government of India, mark Amul will soonberecognised as a well-known trademark andjoin the likes of Pepsi, Kodak, and Wimbledon. This governmental direction will provide unprecedented global protection to the mark, ensuring that it is not used by anyone else or for any other product.
According to R S Sodhi, managing director of Gujarat Cooperative Milk Marketing Federation, which owns Amul brand, this recognition accorded by the Governmentwould not only have an impact on cross-border reputation but will also ensure that no one gets registration for Amul in other categories. With the growing instances of trademark infringement and passing off, this decision of the Government will surely act as a detriment to those who seek to ride on the success of others.
The term “well-known trademark” has been defined in the Trade Marks Act, 1999 under section 2(zg). It refers to 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.
Delhi High Court also maintained that if a well-known mark is not protected from unauthorized use then a segment of public that uses particular goods with such mark may get confused on seeing the same trademark applied to the goods of any other person.[1]
According to section 11(9) of the Act, registration or usage of a mark in India is not a prerequisite forassigning it the status of a well-known trade mark. Therefore if mark is neitherregistered nor used in India, it can still be a well-known trademark. This view was even affirmed by the Supreme Court inN.R.Dongre&ors.vs. Whirlpool Corporation&Anr[2]., wherein the plaintiff failed to renew their registration and in the meantime the defendants registered the impugned trademark i.e. ‘whirlpool’ and began selling their goods under the said trademark. The court held that the plaintiff by virtue of use and advertisements had acquired trans-border reputation and were a well-known trademark even if theyfailed to renew their trademark’s registration.
Judicial authorities in India have successfully protected the well-known trademarks from infringement and passing off. There has been a growing consensus amongst the judicial community that stringent efforts are required to deal with the menace of trademark infringement and passing off. Barring Pepsico, Telco, and now Amulwhich have been given their well-known status by theGovernment, in all the remaining cases, well-known trademarks have been granted through courts after proprietors or right holders sought an action in infringement cases[3]. Other Indian brands which have received the protection of well-known trademarks include Nirma, Bajaj Bata, Bisleri, and Infosys while the global brands include Cartier, Dunhill, Yahoo, and Playboy.
[1] Rolex SA v. Alex JewelleryPvt Ltd &ors – 2009 (41) PTC 284 (Del)
[2]1996(16)PTC476(Del)
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