The Trade Marks Act 1999, which came into force on September 15 2003, was India's successful attempt to harmonize its trade mark laws with the requirements of TRIPs, as it differentiates between well-known trade marks and trade marks generally. The 1999 Act deals extensively with the facts to be considered and methods to be adopted by the Registrar in protecting a well-known trade mark while considering an application for registration of an identical or similar mark in any class or classes of goods or services, whether the proprietor of such a well-known mark be an Indian or a foreign company, as well as at the same time protecting the interests of good faith proprietors. The courts in India, however, already afforded protection to such well-known trade marks against illegal copying, even before the introduction of the provisions in the Trade Marks Act 1999.

In India there is no requirement that a trade mark should be well-known to the public at large (s.11(9) (v)). In order to be well known, a trade mark need only be known or recognized by a relevant section of the public (s.11(7)). The criteria for determining what constitutes "a relevant section of the public" are: the number of actual or potential consumers of the goods or services (s.11(7)(i)); the number of people involved in the channels of distribution of the goods or services (s.11(7)(ii)); the business circles dealing with the goods or services (s.11(7)(iii)). A trade mark is only required to be well known in one of the relevant sections of the public in India.

In determining whether a mark is well known, the mark does not have to be used or registered in India (s.11(9)(i) and (ii), nor does an application need to have been filed in India (s.11(9)(iii)).

Similarly, there is no requirement for the trade mark to be well known in any jurisdictions other than India (s.11(9)(iv)(a)), or to have been registered anywhere in the world (s.11(9)(iv)(b)), or for an application to have been filed anywhere in the world (s.11(9)(iv)(c)).

In order to determine whether a trade mark is well known or not, the registrar must take into account the following facts:

• The knowledge and/or recognition of the trade mark in the relevant section of the public, including the knowledge obtained as a result of promotion of the trade mark in India (s.11(6)(i));
• the duration, extent and geographical area of any use of the trade mark (s.11(6)(ii));
• the duration, extent and geographical area of any promotion of the mark, including publicizing of goods and services to which the trade mark applies at events such as fairs or exhibitions (s.11(6)(iii)); and
• records of successful enforcement of the trade mark rights, in particular, the extent to which the trade mark has been recognized as a well-known mark by any court or Registrar under that record.

To prove that a trade mark has been promoted in India, details may include: sales promotion figures in India dating as far back as possible; sales promotion figures concerning use of the mark in major countries, especially commonwealth ones such as the UK, Australia, Canada and Singapore; sales promotion figures concerning the use of the mark in major world countries such as the US, the Gulf countries, south Asian countries and countries in the EU, such as Germany and the Netherlands, with a large Indian population; all forms of advertisements, publicity and presentation of the mark; and any other form of promotion accessible to the Indian public.

To show the extent of use of the trade mark in India and other parts of the world, details may include: sales figures pertaining to the use of the trade mark in India; sales figures pertaining to the use of the mark in major countries where there are large sections of the Indian population; records of successful enforcement of the trade mark rights in the world, in particular, details of proceedings anywhere in the world where the trade mark may have been held to be well known or famous.

Protection of well-known trade marks by the new Act recognizes more modern concepts of trade mark protection. One of the great changes brought about by the Act is the statutory protection given to well-known trade marks, which were previously protected under common law.

Gladys Mirandah

Patrick Mirandah Co (Singapore)
111 North Bridge Road
#22-02 Peninsula Plaza
Singapore 179098
Singapore
Tel: +65 6336 9696
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