IPR Newsletter: Case Analysis– Hermes International & Anr. V Crimzon Fashion Accessories Pvt Ltd – March 2023
What Is A Well-Known Trademark?
‘Well-known’, the word itself suggests its meaning. Well-known means something which is popular or famous and recognized by the larger part of society. Well-known trademarks also have the same significance. Well-known trademarks get the greatest degree of protection under the Trademark law. Well-known trademarks are special trademarks because they are known by a majority of the population as a result of which, the quality of services or goods they provide is recognized throughout the world. This comes as goodwill to the company and so they are provided special protection under the Trademark Law. This extraordinary protection is mentioned under Section 2(zg) of the Indian Trademarks Act 1999, which states that a ‘well-known’ trademark is that type of a trademark which has become so to the substantial part of the public who use such goods and services, that the use of such marks in relation to other goods or services which shall be deemed to be taken as indicating a connection between those goods or services and a person using the mark in relation to the first-mentioned goods or services. So in simple words, for example, XYZ is an automobile company well-known for its products. Now, another company, say, ABC has used the name of XYZ company for the use of certain services which are not related to what XYZ company does. Now, because XYZ is a well-known company, ABC will not be able to use that mark in the name of XYZ company. Such is the protection given under the Trademark Act. In the case of Tata Sons Ltd. vs Manoj Dodia & Ors. , TATA is a well-known trademark and the defendants were using the TATA name for selling products that are not related to what TATA does. The court here held that TATA being a well-known trademark, the use of the product in the name of TATA by the defendant will have to stop and will amount to trademark infringement. The same thing was observed in the case of Rolex Sa v. Alex Jewellery Pvt Ltd & Ors. As Rolex is a well-known trademark.
How To Recognize A Well-Known Trademark?
Section 11(2) of the Trademark Act 1999 states that if a trademark is distinctly similar to a well-known mark, then the former will not be registered if its use will be detrimental and damage the repute of the well-known mark. Section 11(6) lays down certain conditions on the basis of which a well-known trademark is recognized, they are:
- The general public must have knowledge of the mark- In the case of Ihhr Hospitality Pvt Ltd vs Bestech India Pvt Ltd, the court observed that the general public would mean consumers, manufacturers, business persons, and all other people who are involved in the business who are involved in the sale of this trademark. Clause 7 of Section 7 also mentions similar grounds to determine whether a trademark is recognized amongst the general public.
- Extent, Duration, and the Geographical Area in which the patent is promoted and used
- Duration or Geographical Area of registration or application of registration – This condition refers to transborder reputation. If a trademark is well-known, its success will reflect not just in its own country, but also in other countries. The Toshiba Corporation case gave emphasis on trans-border reputation.
- Record of successful enforcement of Rights enshrined with a TradeMark.
Section 11(9) lays down certain conditions which are not required for a well-known trademark.
- That it has been used in India.
- That it has been registered.
- That the application for registration has been filed in India.
- That it is Well-known or registered in any jurisdiction other than India.
- That it is known by the public at large.
Rule 124 of the Trademark Rules 2017, is the latest development in terms of well-known trademarks. Before this rule, trademarks were declared as well-known on the basis of their goodwill and reputation in society and the other conditions which are mentioned above. However, with the implementation of this rule, now, owners of trademarks can apply online by filing a form to be granted the status of a well-known mark under this rule. The form should be supported with certain documents and online fees of Rs. 1,00,000. However, the final discretion to declare the mark as well-known will be in the hands of the Registrar of Trademarks.
Case Analysis- Hermes International & Anr. V Crimzon Fashion Accessories Pvt Ltd.
Recently the luxury French brand Hermes International which specializes in lifestyle accessories, jewellery, furniture, etc. was involved in a trademark infringement dispute with a Mumbai-based company known as Crimzon Fashion Accessories Pvt Ltd. Crimzon is a designer footwear outlet. Hermes alleged that Crimzon was using its logo mark ‘H’ for a wide range of luxury footwear brands which can be seen on their website. In response to this, Crimzon submitted that they would have stopped using the mark if a cease-and-desist notice would have been sent to them by the French company. However, the court held against the Mumbai-based company and ordered them to stop using the ‘H’ logo mark of Hermes.
The case went on further as the plaintiffs also wanted to declare their mark as a well-known trademark. The Counsel for the plaintiffs laid down various submissions according to Section 11(6) of the Trademark Act including that their products have been recognized by global magazines like Vogue, Harper Bazaar, etc., their premier product Oran sandals celebrated its 25th anniversary and was designed famous French designer Pierre Hardy. After considering all the factors, Justice Shankar observed that a brand’s reputation need not just be known to the relevant sections of society, but also to the wider public, so, the logo ‘H’ of Hermes International satisfies all the conditions under Section 11(6) and hence, it is to be declared as a well-known trademark.
Well-known trademarks get extraordinary protection under the Trademark Act because they have earned that status and reputation to be declared as a well-known mark. A well-known trademark can be a word mark or a logo mark also. The ‘H’ logo of luxury brand Hermes International was added to the elite category of marks which also includes services and products like Google, Rolex, Bisleri, Titan watches, etc.