Intellectual Property Rights

Project Topic: Well Known Trade Marks- A Study of USA & Indian Legal
Regime

Submission by:

T. KRANTHI KIRAN

18LLB127

SEC: B

SYNOPSIS

Introduction:

A Study of Indian Legal Regime: The Trademarks Act, 1999, defines well-known
trademark as, "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.

Unlike other trademarks whose goodwill and reputation is limited to a certain specified
geographical area and to a certain range of products, well-known trademarks have its goodwill
and reputation protected across the nation and across categories of goods and services. It is law
that restricts the Trade Mark Registry to allow and register any mark as a trademark which is
deceptively similar to any of the well-known trademark. For instance, Google has been
registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc.
can register the term 'Google' for any category of goods and services. Even if the service is not
related to the Internet industry, no other company but Alphabet Inc. can register 'Google' as its
trademark.
A study of USA: Article 6bis of the 1967 Paris Convention for the Protection of Industrial
Property requires member countries, such as the United States, to afford certain protections to
well-known marks, regardless of whether they are registered. Specifically, member countries
must provide the means to refuse or cancel the registration, and prohibit the use, of a well-known
mark when applied for or used by an unauthorized party for identical or similar goods, when its
use or registration would likely cause confusion.
Article 16.2 of the World Trade Organization Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement), which came into force in 1995, extended
Article 6bis of the Paris Convention to include services. It provided that members shall take into
account that a mark is well known to a relevant sector of the public (not necessarily the entire
country, or only consumers of the specific products) and the promotion of the mark (not just its
use). Article 16.3 of the TRIPS Agreement extended the protections of Article 6bis to well-
known marks when used on unrelated goods or services in cases where the well-known mark is
registered, if such use indicates a connection to the owner and the owner of the well-known mark
would likely be damaged.
SCOPE OF THE STUDY:

The scope of this study is curtailed to the laws applicable in United States and India.

SIGNIFICANCE OF THE STUDY:

With coming up of the new Trade Mark Rules 2017, a new procedure has been created that
allows the Registrar to proclaim a particular trademark as "well known". According to the new
rule, a trademark owner can file an application in form TM-M with a request made to the
Registrar for declaring the mark to be "well-known". A well-known trade mark has been
vouchsafed with extraordinary protection and safeguards against passing off and infringement of
such trademarks. 

RESEARCH METHODOLOGY:

The research methodology is doctrinal in nature. In addition to this, the research article is:

a. Analytical;
b. Comparative;
 c. Descriptive;
d. Critical.
RESEARCH QUESTIONS:

1. Whether & how can Lanham Act protects well known foreign marks?
2. Whether Indian Legislature extended extraordinary protection to well-known trade
marks?
3. Whether there are any Factors to be considered while determining whether a trademark is
well-known or not?
LITERATURE REVIEW:

The following are the resources utilized for the purpose of this Research work.

Books:

A. Lionel Bently
B. Brad Sherman,
C. Intellectual Property Law (2008).

Articles:

 Lionel Bently, Jennifer Davis And Jane C. Ginsburg, Trade Marks and Brands: An
Interdisciplinary Critique, (Cambridge University Press, 2008), Vol.1, pg 80.
This article elucidates the concept of trademark in a lucid way. The authors suggest a new
perspective.

 Deven R. Desai, From Trademarks to Brands, 64 FLA. L. REV. 981 (2012).

This article aids the research through the innovative perspective of the author.

Case Laws:

1. Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369]

2. Rolex Sa v. Alex Jewellery Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.)]
3. Whirlpool Co. & Anr. v. N.R. Dongre
4. Bloomberg Finance LP v. Prafulla Saklecha & Ors.
5. Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks