Well - Known or Merely Reputed? Unravelling the Legislative Confusion between Sections- 11 and 29(4) of the Trademarks Act, 1999

Introduction

Are a 'well-known trademark' under Section 11 and a 'trademark having a reputation' under Section 29(4) of the Trade Marks Act, 1999 the same thing? If courts have treated them as equivalent, are they right to do so? Indian trademark law draws a critical but mostly overlooked distinction between a well-known mark under Section 11 and a mark with a reputation under Section 29(4). The former provides us with an absolute bar on registration of a conflicting mark, the latter provides us with a civil remedy against infringement by dilution. Despite the use of completely different terminology, the courts have blurred the lines between these two concepts, and used the requirement of a well-known mark to prove infringement under Section 29(4).

Using these terms interchangeably is dangerous and can have hazardous consequences, since the threshold requirement for a well-known mark is much higher than a mark with a reputation. This blog establishes this distinction through statutory text, relevant case law, and legislative intent behind both of these provisions.

Statutory Provisions

The term “well known” is defined under Section 2(1)(zg) which provides that a well-known trademark is a mark that has become so widely recognized by the public that people associate it with a particular business or source, even if the mark is not registered for all goods or services. Examples include Tata, Apple, Coca-Cola.

The determination of a well-known mark can be done either by the Registrar of Trademarks or the courts, using factors enumerated in Section 11(6) of the trademarks act,1999.

By contrast, the phrase "mark with a reputation" appears in Section 29(4) which governs infringement of a registered Trademark, It provides that a registered trademark is infringed where a defendant uses an identical or similar mark for dissimilar goods or services, and where the registered mark has a 'reputation in India', and the use without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark.

Critically, Section 29(4) does not use the phrase 'well-known trademark' anywhere. It does not cross-reference Section 2(1)(zg). It does not require that the mark be recognised in any official list. All it requires is that the mark have a 'reputation in India' a phrase left deliberately undefined by the legislature.

The Real Difference : Not just Semantics

The Threshold of Recognition

The threshold for well-known status is high because, under section 2(1)(zg) it must be known to a substantial segment of the public, it contemplates marks such as Pepsi, WHIRLPOOL, or CARTER, whose fame transcends the industry in which they potentially operate. In Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. the Delhi High Court laid down that for Section 11(2) to apply, both conditions identity/similarity of marks and the well-known status of the earlier mark must be conjunctively satisfied. On the other hand, a mark with a reputation needs recognition or reputation among the relevant public in India. It is a type of relative, contextual standard, which simply poses the question: Would the use of this one's brand by another in a different industry provide them with an "unfair advantage" or "harm" the other brand? Again, the bar is much lower than in other instances and it should be.

1. Registration and use in India

Section 11(9) explicitly states that in determining whether a mark is well-known, the Registrar shall not require evidence of actual registration or use in India. This recognizes the international dimensions of trademark fame. Section 29(4)(c), however, requires that the registered trademark have a reputation in India. You cannot sue for infringement under Section 29(4) with an unregistered mark, however famous it may be globally. The provision is a creature of registration.

2. Purpose and Context

A conflicting trademark can never be registered as it’s prevented by Section 11. A registered owner can sue for damages (civil relief) and an injunction to stop infringement under Section 29(4). Therefore, the legal proceedings, possible remedies, and procedural context for both sections are vastly different. It would be ludicrous if the evidence used to prevent registration of a mark was the same as that used in an infringement action to obtain damages/injunctions.

The Judicial Triangle

Indian courts have not always maintained the distinction with sufficient care, which has led to blurring of line between the two concepts, which is established through the following cases-

• The Delhi High Court’s 1994 decision in Daimler Benz Aktiegesellschaft v. Hybo Hindustan was groundbreaking. Prior to the Trade Marks Act Of 1999 being enacted, this case was the first one on record where the principle of dilution was recognized by the court. This particular court ruled that an automobile company with a well-known name, such as Benz, could not use its name on women's undergarments without any statutory basis, but rather solely on the grounds that this company had such an outstanding reputation. The confusion continued even after the Trade Marks act 1999 was implemented.

• In Bloomberg Finance L.P. v Prafull Saklecha & Ors., the Delhi High Court makes an important observation that if a trade mark has been declared well known, such a finding can be relied upon when providing evidence to support a claim of reputation under the definition of trade mark under Section 29(4) of the Trade Marks Act states that well-known marks will meet the lesser standard of having a reputation. This is certainly correct so far as it goes, since an established well-known mark would qualify as having a reputation. However, one key point to note about the two definitions is that each defines a different standard. Therefore, whatever a court may conclude, having a reputation does not mean having a well-known mark. Courts do not consistently display this principle.

• RPG Enterprises has sent a strong message with their decision regarding infringement of intangible assets. Essentially this case concluded that for there to an infringement under Section 29(4) of the Trade Marks Act there is no requirement for a mark to be included in the list of well-known trademarks published by the Registrar; nor is it necessary to demonstrate a mark's eligibility based upon the definition contained in Section 2(1)(zg). It is sufficient for a mark to simply have an established reputation in India.

• A precedent supporting RPG Enterprises' decision can also be found in the Delhi High Court's decision in Rolex SA v. Alex Jewellery Pvt. Ltd. Like RPG, the court restrained the defendant from using a mark that formally contains 'Rolex'. The Delhi High Court decision adopted a two-tiered approach, whereby there were two different requirements for establishing reputation in India versus establishing formal well-known status.

• However, BMW AG v. DMW demonstrates the confusion that can arise when courts ignore or fail to distinguish between the two concepts commentators have suggested that the court's failure to provide boundaries between the two terms has left an obvious void in the interpretation of the statute.

The International Dimension

The obligations that India has under International Law reinforce the above conclusion. Article 16.3 of the TRIPS Agreement states member countries are required to protect well-known marks from being registered as trademarks for dissimilar goods or services based on a likelihood that such use will create an impression that there is a connection between the registrant and the registered owner of the trademark, and thereby likely cause damage to the trademark owner's rights.

Article 6bis of the Paris Convention, which forms the basis of the obligation to protect well-known marks under TRIPS, provides for the test of knowledge in a relevant sector of the public. Likewise, the WIPO Joint Recommendation issued in 1999 provides for the relevant sector of the public to be recognized as the test of well-known mark status. The definition of "well-known" in section 11 of the Trade Marks Act 2002, which requires that the relevant sector of the public has knowledge of a mark, is therefore a faithful reflection of this international standard.

Section 29(4), which gives registered trademark owners an opportunity to obtain a national remedy without incorporating the TRIPS definition of well-known trademarks, provides an additional layer of domestic protection for Indian trademark owners who may not enjoy international recognition, but have established a domestic reputation through the use of their trademark. Eliminating the distinction between the two definitions would eliminate the additional layer of protection provided to Indian trademark owners under the current definition.

Conclusion

The Trade Marks Act 1999 creates two different phrases with different meanings in different sections for different purposes. The term 'well-known trademark' under Section 11 is a threshold that applies to trademarks of great fame, that prevents them from being registered in any class by any owner. The term 'reputation in India', as used in Section 29(4), applies to registered trademarks and is therefore intended as an easily met threshold to prevent registered trademark owners from experiencing post-registration dilution and from free-riding on the reputation of their registered trademark.

When the courts use interchangeable standards, both case law and statutory law suffer as applied to an individual trademark owner. When using the high-threshold requirements of Section 11 to assess a case within the parameters of Section 29(4), there is a risk associated with both open and closed access to marks that should be afforded proper protection and that have met the statutory threshold requirements of the respective sections.

Therefore, to preserve both the distinctions between the two terms and the legislative intent as to the difference between the two terms, the jurisprudence of the protection of trademarks in India ought to be formulated as a coherently logically tiered system of protection.

Author: Sanskar Chandak, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

Endnotes

1. Trade Marks Act, 1999, §§ 2(1)(zg), 11, 29(4). These provisions define a "well-known trademark", prescribe the criteria for determining well-known status, and provide protection against infringement of trademarks having a reputation in India.

2. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.. The Supreme Court clarified that trans-border reputation alone is insufficient and that reputation in India must be established to claim protection for a well-known trademark. It also examined the scope of Sections 11 and 29 of the Trade Marks Act.

3. ITC Limited v. Philip Morris Products SA. The Delhi High Court analysed the essential ingredients of Section 29(4), holding that infringement of a reputed trademark requires proof of reputation in India, use without due cause, and unfair advantage or detriment to the distinctive character or repute of the mark.

4. Bloomberg Finance LP v. Prafull Saklecha. The Delhi High Court discussed the concept of dilution under Section 29(4) and reaffirmed that reputed marks enjoy protection even in relation to dissimilar goods or services where statutory conditions are satisfied.

5. World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (1999). The Recommendation lays down internationally recognised factors for determining whether a trademark qualifies as well-known and has significantly influenced Indian trademark jurisprudence.

6. Kerly's Law of Trade Marks and Trade Names (Sweet & Maxwell, 2018), Chapters 14 & 16. The treatise provides an authoritative discussion on trademark reputation, dilution, well-known marks, and the distinction between reputation-based protection and traditional likelihood-of-confusion analysis.