Rights of well-known trademarks in the prospective from commencement
Rights of well-known trademarks in the prospective from commencement
The existing trademarks which qualify into the new category of well-known trademarks would enjoy rights even in relation to different goods or services and would be able to oppose the registration and or infringement under new rights. Other similar trademarks to well-known trademarks could thus be in conflict with well-known trademarks in relation to coverage of goods or services. But the trademark already in operation would be prior marks for the purpose of a well-known trademark seeking to oppose registration for different goods or expand its coverage through section 29(4) or even passing off.
The act granted an important immunity to all the trademarks having acquired rights by registration or use in good faith in India under section 11(11). The well-known trademarks could not proceed against them on the basis of their similarity with the well-known trademarks, but a well-known mark may proceed against such marks for any other reason. This would insulate all prior marks against any ill effects of enhanced rights to well-known trademark in the law made by the 1999 act.
Section 11(11) is applicable on whole of the act because it uses the expression “nothing in this act shall prejudice the validity of the registration or right to use. But if a mark similar to well-known trademark is sought to be registered or used after the commencement of 1999 act, section 11(11) would not be applicable and the proprietors of well-known marks shall be entitled to take action against registered or other trademarks in use within a period of five years.
For example, if a trademark is registered or used from the year 2004 and it is similar to a well-known trademark and the well-known trademark could not object in opposition proceedings at the time of registration, it would be open for the well-known trademark to ask for the removal of registration as also to oppose the use within a period of five years meaning thereby till the year 2009.
Immunity to good faith similar marks:
The owners of well-known trademarks cannot asset against existing similar trademarks which are registered or used in good faith by virtue of section 11(1). Immunity has been granted to such trademarks only on the ground of its identity or similarity with well-known trademark but the attack on other grounds is possible, e.g., bad faith. Nothing in the 1999 act would affect their registration or right to use an unregistered mark vested with rights before 15 September 2003 for the reason that such trademarks are identical or similar to well-known trademarks. There are two important conditions for this immunity to operate that their registration or use should be in good faith and secondly, in case of registered marks they should have disclosed all the material information to the registrar.
The 1999 act has not provided for protection to well-known trademark, whether registered or unregistered against a prior registered trademark or a trademark used in India in good faith after the period of 5 years is over, as is prescribed in section 33. Moreover, a good faith registered or used mark which has been in operation before 15 September 2003 cannot be attacked by a well-known trademark by virtue of section 11(11). However, if the bad faith of an Indian party in registration or use is shown, then the grievance of well-known trademark would have to be accommodated and Indian party may lose the right.
In case the Madras high court without referring to section 11(11) passed an equitable order in favour of the respondent which would avoid his uncalled for losses, whereby it granted only prospective rights to the well-known trademark. The court was bound by judicial pronouncements to upload trans-border reputation.
Five years protection –Acquiescence in section 33 – Proviso to section 11:
Section 33 operates as a proviso to section 11. Section 33 makes a larger registered trademark unassailable on the lapse of 5 years if the proprietor of earlier trademark was entitled to oppose but did not do so for a continuous period of 5 years. But if the later trademark has been registered without good faith the condition of 5 years is not applicable and the earlier trademark including a well-known mark can assail a later trademark after the lapse of 5 years.
The proprietor of the earlier trademark is said to have acquiesced on the expiry of a period of 5 years. No meaning of the words ‘earlier trademark’ used in section 33 is given. But, earlier trademark is defined in explanation to section 11(4) which definition is limited to ‘for the purposes of section 11 only’, unless the context otherwise requires apparently the same definition would apply to section 33. The provisions in section 11 are allied provisions to section 33.
The proprietor of an earlier trademark, on becoming aware of the use of registration of a later trademark, in circumstances specified in section 11(1),(2) and (3) can challenge the registration of later trademark only up to five years. If, after becoming aware, such a proprietor does not object or take proceedings within a continuous period of five years, then he is not entitled to apply for declaration of invalidity of the registration of such later trademark. He shall also not be entitled to oppose the use of later registered trademark (protected by section 33) in relation to goods or services for which it has been used in those five years. This disability in section 33 is limited to petitioning on the basis of earlier trademark. If there are other grounds available, the proprietor of earlier mark may assail the later trademark accordingly.
Later mark not to oppose earlier mark:
Another effect of this acquiescence is that even though the earlier trademark has lost the right to oppose the later registered trademark, the later trademark is also not entitled to oppose the use of earlier trademark, or exploiting the earlier rights in a trademark.
Mere claim of not being aware of the use:
When a proprietor of an earlier trademark petitions, making a claim of not being aware of the use of later registered trademark, it may not suffice. In such circumstances the proprietor of earlier trademark would be called upon to prove that he use of later registered trademark was so scant or minimal, that the proprietor of earlier trademark could not have known the use of the later registered trademark. The earlier trademark has to discharge the initial burden of proof. Thereafter the later trademark should prove that the extent of use was such that it would be known to the relevant trade. Thus, mere claim of not being aware of the use would not satisfy the requirement of section 33.
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