20 July, 2017
Well-known Trademarks
The Trade Marks Rules, 2017 (‘New Rules ’) and the public notice dated May 22, 2017 issued by the Trade Marks Registry inter alia provide for a mechanism whereby brand owners can file an application with the Registrar of Trademarks (‘Registrar ’) for determination of a trademark as ‘well known’2 . The key provisions in connection with this mechanism have been briefly summarized below:
i. The application to the Registrar for determination of a trademark as ‘well-known’ will have to be based on, inter alia , the following criteria:
a. knowledge or recognition in the relevant section of the public;
b. duration, extent, geographical area of use and promotion / advertisement;
c. duration and geographical area of any registration of or any application for registration reflecting use or recognition of the trade mark;
d. record of successful enforcement of the rights by any court or the Registrar; and
e. number of actual or potential consumers / person involved in the distribution of the goods or services.
The application will have to be accompanied by documentary evidence for each fact that is sought to be claimed including evidence as to use of the trademark, including publicity and advertisement, applications for registration made or obtained in India and outside, annual sale turnover based on the trademark etc.
ii. If the Registrar determines that the trademark is well-known and after deciding on the objections received (if any), the Registrar will publish the mark in the Trademark Journal and include it in the list of well-known trademarks. An appeal lies to the Intellectual Property Appellate Board (‘IPAB ’) within three months from the date of any decision of the Registrar.
The New Rules do not provide for a specific time frame within which the Registrar will determine if the mark is well-known. One of the main advantages of the ‘well known’ mark status in India, if the mark is registered, is the availability of a remedy of dilution under Section 29(4) of the Trade Marks Act, 1999.
Copyright Board Merged with the IPAB
Sections 160 and 161 of the Finance Act, which have come into force on May 26, 2017, amend the provisions of the Copyright Act, 1957 and the Trade Marks Act, 1999 to pave way for the merger of the Copyright Board with the IPAB . As a result, all the functions of the Copyright Board (including adjudicating disputes in relation to assignment of copyright, granting of compulsory licenses and statutory licenses in relation to certain types of works) will now get transferred to the IPAB .
Pursuant to powers granted under the Finance Act, the Central Government has promulgated and brought into force the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 (‘Tribunal Rules ’) which govern the qualifications, experience and other conditions of service of the members of various tribunals, including the IPAB . According to the Tribunal Rules, a search-cum-selection committee would be responsible for the recruitment of members for the IPAB .
Given the fact that the Copyright Board has not been functional for quite a few years now, the merger of the Copyright Board with the IPAB gives a forum to the concerned stakeholders to seek redressal of their grievances. However, it still remains to be seen how effectively the IPAB will be able to perform the tasks, roles and responsibilities erstwhile carried out by the Copyright Board, given the huge backlog of pending matters at the IPAB .
Summary Judgment by the Delhi HC in a Trademark Suit
In the case of Ahuja Radios v. A Karim ,3 filed under the Commercial Courts Act, 2015, the Delhi HC , by its order dated May 1, 2017, passed a summary judgment granting a permanent injunction restraining infringement of trademark, passing off and delivery in favour of the plaintiff, i.e. Ahuja Radios.
The plaintiff had procured an interim injunction on March 6, 2013 against the defendant restraining the defendant from dealing in products (being public address systems and audio equipment) bearing the plaintiff ’s model number ‘SSA 250 M’ under the ‘AHUJA ’ trademark or those which were deceptively similar. Thereafter, upon the inspection of the defendant’s premises by a local commissioner on April 3, 2013, amplifiers of 250 W [Model No. SSA 250 M] were recovered and the Commissioner’s report mentioned that the defendant had admitted to the amplifiers not being original. Despite of the defendant’s allegation that the recovered amplifiers were fraudulently implanted at its premises, the Delhi HC determined that the plaintiff is the undisputed registered proprietor of the trademark in question and that the defendant is not entitled to use the same. The Court noted that the defendant has no real prospect of resisting the decree of injunction and also has little prospect of succeeding in its defense.
2 The term ‘well-known trade mark’, in relation to goods or services, is defined under Section 2(1)(zg) of the Trade Marks Act, 1999 to mean 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.
3 Ahuja Radios v. A Karim, CS(OS) 447/2013, Delhi High Court (order dated May 01, 2017).
For further information, please contact:
Zia Mody, Partner, AZB & Partners
zia.mody@azbpartners.com
