National University of Advanced Legal Studies, Kochi (Batch of 2020)

Introduction
The concept of “well-known trademarks”, defined in Section 2(1)(zg) of the Trademarks Act, 1999, creates a dichotomy within trademark jurisprudence in India by granting special protection against infringement and dilution to certain marks that are considered well-known. Essentially, the act separates all trademarks into two categories and offers them disproportionate protections. However, such a measure is exceedingly important in a globalised economy such as the one we exist in. Of equal importance is the need to eliminate ambiguity in the law regarding dilution of well-known trademarks. In this article, I will briefly outline the concept of well-known trademarks in Indian trademark law and examine its shortcomings, arguing that the present statutory framework in India does not adequately address pressing issues.

Well-Known Trademarks and the Dilution of Goodwill
As per the statute, any mark which has become so fundamental or well-known regarding a good or service so as to create an impression, in the minds of consumers, that the use of such a mark in other goods or services would indicate a connection to the well-known mark, would be given certain rare protections that are not afforded to other marks. The most pertinent of these protections is being able to affect the use of any identical and/or deceptively similar mark for any category/class of goods and services.

The rationale behind granting such broad protections to well-known trademarks is to prevent trademark dilution. Dilution of goodwill of a trademark occurs when identical or deceptively similar marks are used on non-competing goods by entities other than the true mark’s owners, thereby weakening the identity of the true mark in public perception and withering away the association of the true mark with its source. An illustration can be found in the famous Kodak case, where the Kodak Cycle Company was restricted from using the "Kodak" mark on their bicycles as it diluted the goodwill of the well-known "Kodak" camera brand, despite the goods themselves being in different categories. For the average consumer, the mark “Kodak” is almost strictly connected with camera products, but the use of a similar mark on bicycles would have caused the consumer to connect the same mark with two products, diluting the trademark and the identity of the true brand.

Shortcomings in the Present Statutory Framework
A well-known mark under the Trademarks Act, 1999, enjoys an almost universal level of protection against infringement. A well-known trademark is not treated merely as a commercial sign, but as a “silent salesman” that infringing entities are taking unfair advantage of. Even the traditional restrictions of territoriality do not apply to well-known trademarks.

While Sections 11(6) and 11(9) of the Act do provide criteria for the determination and grant of a well-known trademark, what remains sine qua non is the condition of reputation. Further, although academic scholarship has helped identify the criteria that have to be met in order to ascertain trademark dilution, namely, consumer confusion, extent of damage even in the absence of such confusion, and use of the mark on dissimilar goods/services, these rely heavily on the currently accepted notion of a well-known trademark in order to function. Related factors like nature of the good/service are not, or medium of business, are not present - a service that operates exclusively on the internet could easily accrue transboundary reputation but that should not qualify it under Section 2(1)(zg) of the said Act.

The most prominent void left by the present statutory framework is that the condition of reputation is inadequate and incomplete. The guidelines or criteria provided to clarify the condition of reputation are not sufficient to ascertain if a mark is worthy of being considered a well-known trademark. This lacunae in the existing statutory framework results in misapplications of the law, leading to broad protections being enforced for marks that are not exactly “well-known”, which in turn unjustly restrict the trademarks of other entities.

As per Section 11(8) of the Trademarks Act, 1999, a trademark is considered to be a well-known mark if it is well-known in at least one relevant section of the public in India. This provision is in stark contrast to its counterpart in American trademark law, where Section 2(2)(A) of the Federal Trademark Revision Act of 2006 states that “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” By restricting the condition of reputation, the subset of marks that can be considered well-known marks increases exponentially, and this results in disproportionate protections being granted to companies unnecessarily. An enlightening case on the matter is Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd. (2018), where the reputation of the mark “Nandini”, associated with milk and dairy products, was determined by the IPAB based on its repeated mention in regional weekly publications. If the protections afforded to well-known trademarks are not restricted even by the traditional conditions of territorial applicability, shouldn’t the reputation of the marks transcend territorial or at least regional borders as well? Surely, such an application of the law contravenes the very spirit of intellectual property.

Additionally, this means that under the Indian trademark law, a mark does not have to be publicly recognized in order to be considered a well-known trademark. A glaring example is found in Marico Limited and Ors. vs. Madhu Gupta (2010), where the court held that the plaintiff’s mark “Kaya” had prima facie acquired distinctiveness based on sales and advertisement expenditure.

Conclusion
In a constantly moving, globalized world like ours, brand names and identities play a major role in shaping success. Hence, it is imperative that owners must be able to protect their marks and the goodwill associated with these marks from being diluted by repeated unauthorized use by other entities. Conceptually, the legal distinction of a well-known trademark helps to achieve these goals by providing broad protections to certain trademarks, but the present statutory framework in Indian trademark law dealing with well-known trademarks is grossly unsatisfactory. Not only are well-known trademarks defined in a very narrow and inadequate manner, but the very factors they depend on are also shrouded in ambiguity. This leads to misapplications of the law, which unjustly affect other businesses and their marks, often to their detriment.

N.B.: The author certifies that the work is original. Views expressed are personal.