IS GOODWILL ENOUGH TO CLASSIFY AS WELL-KNOWN TRADEMARK?

December 22, 2022by admin0

On 24th November, 2022, the Honorable Delhi High Court declared ITC Limited’s (the Plaintiff) Trademark “BUKHARA” as a well-known trademark, and further restrained Central Park Estates Private Limited (the Defendants) from using the mark “BALKH BUKHARA”, or any other mark which is identical or deceptively similar to the Plaintiff’s mark “BUKHARA” for their restaurant, hotel or other hospitality related services. The relevant facts of the case that led to such decree by the Honorable Court have been elucidated below:

Material Facts

The Plaintiff began operating in the hotel industry in 1975, and was known as one of India’s leading private sector businesses with operations in a variety of industries, including fast-moving consumer goods (FMCG), hotels, paperboard and packaging, agribusiness, and information technology. In the late 1970s, the Plaintiff registered the trademark “BUKHARA” for its restaurant at the ITC Maurya Hotel. The restaurant was well-known for its interior design, decor, layout, seating arrangement, the cutlery used to serve food, the wooden menu cards, and the rustic appearance that it had preserved over time. Since 1985, both the word mark and the logo for the brand “BUKHARA” have been registered in India.

Plaintiff was violated by the Defendant for using the name “BALKH BUKHARA” as their trademark for their restaurant. The plaintiff discovered the use of the said mark by the Defendant sometime in October, 2022 and upon enquiry, learnt that the defendants had registered the marks “BALKH BUKHARA RESTAURANT” and “BALKH BUKHARA” logo, both on ‘proposed to be used’ basis. Further, inquiries by the plaintiff revealed that the defendants had copied all aspects of the plaintiff’s “BUKHARA” restaurant, including the name, logo, font, interior design, seating arrangement, staff uniform, bib/apron, utensils, wooden menu, and the overall atmosphere. The logo form and font were also identical.[1]

 

 

 

 What Constitutes a ‘Well-Known Trademark’?

The Court, while deciding the present case, relied upon Under Section 57 of the Trademarks Act of 1999 (hereinafter referred to as “the Act”), which talks about the registration of the trademarks. Section 2 (zg)[2] of the Act defines a well-known mark and states that “well known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

Section 11(6)[3] lays down the factors to be considered for declaration of a mark as a ‘well-known mark’. Section 11(6) states such criteria as: “(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognized as a well-known trade mark by any court or Registrar under that record.” further, Section 29(4)[4] of the Act further protects well-known marks against dilution and unfair advantage.

Plaintiff, hereby, sought to correct the already registered marks of the defendants and reserve its right to bring a separate lawsuit against the defendants for copyright infringement of its artistic work containing the “BUKHARA” device, such as its stylized font. The defendants’ legal counsel claimed that they have no plans to utilize the name “BALKH BUKHARA” or any other mark that contains the word “BUKHARA” for their dining establishments, lodging facilities, or other hospitality-related businesses. The defendants were also stated to have no objections to the lawsuit being decided.

The plaintiff’s restaurant was acknowledged internationally as a regular stop for foreign celebrities and dignitaries, according to the court’s statement regarding the materials produced by the plaintiff in support of its claim that the mark “BUKHARA” had been integrally related to Indian food.

The attribute of certain trademarks or names attaining the status of well-known marks has been acknowledged and recognized by Courts in India for the past several decades. Illustratively, marks such as ‘APPLE,’ ‘WHIRLPOOL,’ ‘BENZ’ etc., have been recognized as ‘well-known’ marks even before the said marks were used on a commercial scale in India. The said concept of according to recognition for ‘well-known’ marks was finally incorporated statutorily in the Trademarks Act, 1999, thus strengthening the recognition granted to such marks. The current provisions under Indian law that statutorily recognize well-known marks are discussed hereinafter.

 

 Conclusion

The court took note of the ruling in ITC Ltd. v. Punchgini, Inc.[5], where the plaintiff failed to get US trademark protection for the “BUKHARA” mark. However, the Court ruled that the US Court’s decision[6] would not apply in the present case since, it was evident from the record that the mark “BUKHARA” originated in India and earned significant goodwill and reputation among both Indians and visitors from other countries. The Court determined that Section 2(zg) read with Section 11(2) of the Act deemed the mark “BUKHARA” to be a well-known mark. The Court further instructed the Registrar of Trademarks to include the “BUKHARA” mark on the list of “well-known trademarks”. The court concluded that  the defendants shall stand restrained from using the mark ‘BALKH BUKHARA’ or any other mark which is identical or deceptively similar to  the plaintiff’s mark ‘BUKHARA’ for their restaurant, hotel or other hospitality related services.

[1] ITC Ltd. v. Central Park Estates (P) Ltd., 2022 SCC OnLine Del 4132.

[2] Section 2(1)(zg) in The Trade Marks Act, 1999

[3] Section 11(6) in The Trade Marks Act, 1999

[4] Section 29(4) in The Trade Marks Act, 1999

[5] 552 US 827 (2007).

[6] (1994) 56 DLT 304 N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714.

 

Author – Shyamli Shukla

Associates

Co-Author – Manshaa Nagpaal

Intern

 

 

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