TATA declared well known under new Trademarks Act

In Tata Sons v Jain (CS (OS) 1922/2003, September 14 2004), the Delhi High Court has declared the trademark TATA well known within the meaning of Section 11(6) of the Trademarks Act 1999. TATA seems to be the first mark to be declared well known under the act, which came into force last year (see New law introduces simplified procedures and broader rights). Previously, marks could only be declared well known under the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights or under common law. Well-known status provides marks with far-reaching advantages in administrative proceedings and enforcement cases.

The criteria used to determine whether a mark is well known within the meaning of Section 11(6) are as follows:

• the degree of knowledge or recognition of the mark by the relevant section of the public;
  
  
• the duration, extent and geographical area of use;
  
  
• the duration, extent and geographical area of promotion; and
  
  
• records of successful enforcement, including the extent to which the mark has been recognized as a well-known mark by any court or registrar.

The provision also stipulates that, much to the advantage of proprietors of foreign marks, in considering whether a mark is well known, it is not a condition that:

• the mark has been used in India;
  
  
• the mark has been registered;
  
  
• an application for registration has been filed in India;
  
  
• the mark is considered well known in a jurisdiction other than India; and
  
  
• the mark is well known to the public at large in India.

The consequences of obtaining well-known status are as follows:

• It bars any refusal for registration of such a mark, in any class, on the basis of lack of distinctiveness.
  
  
• It enables the owner to oppose the registration of any mark that is identical or similar to the well-known mark for any goods or services, if the use of the mark applied for is likely to take undue advantage of or be detrimental to the distinctive character or repute of the well-known mark (ie, dilute it). The use of the word 'likely' implies that there is no need to show actual damage or impact. Further, the burden of proving that the use of the junior mark is not likely to dilute the well-known mark lies on the applicant, thereby substantially reducing the evidentiary obligations on a prospective opponent.
  
  
• It gives greater authority to the mark owner to challenge the use of an identical or similar mark for any category of goods or services.

Residual advantages include:

• the impact on brand valuation;
  
  
• greater recognition of the mark; and
  
  
• owners of well-known marks possibly have a stronger case for seeking damages in infringement cases.

There is also the possibility that, in the period following the granting of well-known status, trademark examiners would reject any application for a similar or identical mark without any need for the owner to oppose the application.

These advantages are driving mark owners to plead well-known mark status more and more. A number of other marks are pending adjudication as well known before the registry, including the mark FORD.

Safir Anand, Anand & Anand, New Dehli