CHAPTER IINTRODUCTION EVERY BRAND in modern era has some reputation and goodwill and such brand recognition shall be considered the foundation for any successful business and it is the most valuable or precious assets for such corporation or company. The most important thing for any brand is their reputation and they not only deals in providing just he basic function of guaranteeing the origin of product or service but they also hold the aura of attraction because of the reputation they command. Thus, the protection of the country becomes most important thing for such brands to do business in other countries than its origin country. In this 21st century, the development of any country cannot take place until all developed and developing countries open their markets for each other. The most important thing any country needs to do before doing any kind of trade or business is the effective protection for their reputed trade mark and preventing misuse of their goodwill by the local traders of such countries. In this era of globalization every thing can be done by one click and by much other electronic machinery and there is no compulsion of physical boundaries between the countries and it has become very redundant.[footnoteRef:2] [2: Nidhi Goyal, Transborder reputation in India 10 JIPR 125 (2004).]

In this capitalism era the drive to sell goods in almost every corner of the world and the competitions between the traders to earn maximum profit and the urge to expand the business in various foreign countries raised a new problem before the todays judicial system. How to protect the interest of such manufactures on foreign soil? This problems raised the new concept of transborder reputation or spillover of reputation.[footnoteRef:3] [3: Vivek Kumar Choudhary, Protection of Well Known Trademarks and Weakening of Honest Concurrent user Defense 15 JIPR 293 (2010).]

The Indian judiciary has adopted the liberal approach in protecting the reputation and goodwill of such traders and they has recognized that the influence of companies ought not to be confined to the physical space in which they operate and therefore they need some effective protection and after looking all such considerations Indian court used the liberal approach by which such foreign trade marks and their reputation can be protected and by such approach foreign applicants can prove goodwill of their marks in India and sustain the passing off action by proving their reputation through widespread transmission of information and its goods or products in all other countries. They can also prove by sowing the evidence that Indian residents has knowledge about and they come to know about such brands when they travelled abroad.[footnoteRef:4] [4: Upshot of Fame: Transborder Reputation in India available at: http://www.phoenixlegal.in/manage/ArticlesPdf/2271300Oct_2012_-_Phoenix_Legal.pdf (Visited on March 18, 2015).]

A manufacture and trader in modern times have to give a distinct name or look or getup to their product, so that the consumers do not get confuse and rely on its quality, price and other feature related to their products, and identify his product as distinguished from the other products of the same description. Every manufacturer makes an attempt to give the goods a different and separate look, quality and identity. Trademarks, gives choice to consumers and play a very important role as it gives the buyer an opportunity to connect with certain products.[footnoteRef:5] This process of giving distinct and different identity to products involves the concept of trade marks [5: Ashwani Kumar Bansal, Law and Role of Foreign Trade Mark in India (1992) (Unpublished Ph.D. dissertation, University of Delhi).]

I. Definition of trade mark, well known mark and transborder reputationa) Trade markAs per Section 2 (1) (zb) (ii) of Trade Marks Acts 1999,[footnoteRef:6] Trade Mark means, A mark proposed to be used in relation to goods or services for the purpose of indicating or as to indicate connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark whether with or without any indication of the identity of that person and includes certification trademark or collective mark Definition does not impose any condition in relation to use by the registered proprietor. If the proprietor under his sponsorship control or allows the use of trade mark by another person than it does not against the definition. [6: Section 2 (1) (zg) of The Trade Marks Act, 1999. reads as trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours and in relation to other provisions of this act.]

b) Well known trade markIn Section 2 (zg) of the Trade Mark Act, 1999[footnoteRef:7]. Well known Trade Mark means, a mark which has became very known to the one substantial segment of the public and it is not similar or identical to goods and services of other trade marks and the use of such mark for other goods and services may indicate to such segment of public that they has some connection with the well known trade mark. A trade mark is not able to be registered in India if such trade mark is same or similar to a well known trademark and the use of such mark would result in unfair advantage to the distinctive character or repute of the earlier trademark.[footnoteRef:8] [7: Section 2 (zg) of The Trade Mark Act, 1999, reads as 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.] [8: Transborder Reputation in India, available at: http://www.iyerschambers.com/article/TransborderReputation.pdf (Visited on March 18, 2015).]

c) Transborder reputationIn section 35 of the TMA, 1999[footnoteRef:9] the transborder reputation concept is embodies and it states, a person must be restrained from using a name or mark which can cause confusion and divert the business of some other proprietor to him or it is likely to cause confusion in some segment of public which are going to deal with such competing business. This makes clear that no business company is allowed to carry such business which may create a confusion on the minds of the public that it is connected with the trade mark of well known or reputed business, for example Rolex.[footnoteRef:10] [9: Section 35 of the TMA, 1999 reads as Nothing in this act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bonafide use by person on his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.] [10: Soumya Banerjee, Transborder Reputation 11 JIPR 274 (2006).]

It is relevant because it distinguishes goods or services of well known trademark from other trade marks and protects the reputation of the company or brand. This helps such brand to protect their goodwill and protect consumers from any deception or confusion. In Leahy v. Glover[footnoteRef:11] wherein Lord Hershell LC said that If plaintiff want to succeed in the action passing off than he has to prove the goodwill or reputation of his business and such goodwill is there in its name, mark of the business. A distinct and different trade mark is very important for the commercial development of the business and to establish substantial economic position in the market. A manufacturer acquires certain exclusive rights in relation to trade mark. Thus in every country there is need of effective legal system to protect the manufacturer. Every brand has value in the market and in the recent survey of brand names Coca Cola ranked as the most valuable trade mark with a value of 20 billion dollars and there are many such brand which has value of billions. Therefore protection of mark through law is very important in all countries. [11: (1893) 10 RPC 141.]

There are some following cases requires for protection of well known trade mark:1. In Re Polar Music International,[footnoteRef:12] In this case it was stated that, a well known trade mark provides information as to give source or sponsorship to a product. A main object of the well known trade mark is to distinguish, identify and point out the origin of the products or services of trade mark. A mark is necessary to know the source of the product and these help consumers in buying such products. [12: 221 U.S.PQ. 315 (1985).]

1. In, The Yorkshire Case,[footnoteRef:13] it was held that, the more distinctive a trade mark whether words mark, or a label or a device or a combination of both, the greater the likelihood of its proprietor being able to distinguish his goods from those of others. [13: (1893) RPC 195.]

1. The trade mark law protects the public from confusion and it should be noted that from the early 20th century the main object of the trade mark statues is to protect the consumers[footnoteRef:14]. In, Falcon Rice Mills Inc v. Community Rice Mills Inc,[footnoteRef:15] it was held that such statues reduce the misunderstanding from the mind of the statues and provide themvariety of products in the market and it provides them truthful information in the market. [14: J.T. Mcarthy, Trademaks and Unfair Competition 57 (The Lawyers Co-Operative Co, 3rd edn., 1994).] [15: 222 U.SP.Q. 197 (1984).]

1. In, Dental Products Co. v. Derby Dental Suppy Co,[footnoteRef:16] it was states that, trade mark guarantees that goods sold under it meet a particular standard of quality. A main function of the mark is to indicate source of the goods. The manufacture gets the goodwill is the advantage obtained from use of trade marks.[footnoteRef:17] So, trade mark law is to prevent others from getting a free ride on the reputation and goodwill of the real owner or manufacture of the product. Justice Holmes once held that a trade mark is a distinguishing token devised r picked out with the intent to appropriate it to a particular class of goods and with the hope that it will come to symbolize goodwill.[footnoteRef:18] [16: Open Jurist, available at http://openjurist.org/725/f2d/336/falcon-rice-mill-inc-v-community-rice-mill-inc (Visited on March 18, 2015).] [17: 230 U.SP.Q. 233 (1986).] [18: 217 U.SP.Q. 1206 (1982).]

II. Scope and Objective of the StudyThe scope of this topic is restricted to the study of protection of well-known trade marks with reference to trans-border reputation under the trade mark law in general and Indian scenario in particular. Reference will be made to the relevant statutory provisions and judicial decisions. Further, a comparative and a critical analysis of the statutory provisions relation to well known trade marks under the Indian trade mark act, 1999 will be made.This paper sheds light on protection of such well-known trademarks in Indian laws, which are owned by foreign nationals. Indian courts have recognized action by foreign plaintiff on the basis of reputation of his goods or services on the foreign soil and have departed from the traditional concept of requirement of use of the trade mark or registration in India for the success in the passing off action. Trans-border reputation is embodied in Section 35 of the Indian Trade Mark Act, 1999 and it offers protection to foreign trade marks on the basis of their international reputation, which was incorporated in Indian law to match with the provisions of TRIPs. The protection provided to unregistered trademarks is also extended to foreign marks, which have a reputation in India on the basis of extensive advertisements and publicity. The international reputation of a trade mark could enable the owner to obtain injunction in the courts of a country in which he is not even trading. Present scenario of recognition and protection of well-known but unregistered and foreign trademark in India is highlighted in this paper.[footnoteRef:19] [19: Supra note 8 at 276.]

III. Hypothesis The researcher has formulated the following hypothesis:1. Reputation is probably the most seriously distorted term in the field of Intellectual Property (IP). Using well known trademarks fraudulently amount to infringement under the trade mark law1. There is need of such restrictions so as to protect the reputation of the well known trade marks as this is the purpose of the trade mark law i.e. to give protection to the manufactures for their contribution and to foster the dissemination of intellectual works for the welfare of the consumers.

IV. Statement of Objectives and Formulation of Research QuestionsThis paper sheds light on protection of such well-known trademarks in Indian laws, which are owned by foreign nationals. Indian courts have recognized action by foreign plaintiff on the basis of reputation of his goods or services on the foreign soil and have departed from the traditional concept of requirement of use of the trade mark or registration in India for the success in the passing off action. Trans-border reputation is embodied in Section 35 of the Indian Trade Mark Act, 1999 and it offers protection to foreign trade marks on the basis of their international reputation, which was incorporated in Indian law to match with the provisions of TRIPs. For the purpose of these objectives the researcher has formulated the following research questions.1. What type of trademark are well-known marks and work done by various International conventions.1. Whether ample protection given to well-known trade marks? If yes what are provisions.1. Whether well-known trade mark of foreign countries can be adequately protected in India? If yes what are the provisions?1. What role judiciary has played for the protection of well-known trademarks?1. Whether the existing provisions in Indian trademark act, 1999 covers all aspects related to well-known trademarks? V. Research MethodologyKeeping in view the hypothesis and the aims and objectives of the study, the research methodology followed is the Doctrinal Method. The emphasis will be on analyzing various legal provisions related to well-known trade mark. Reliance will be place on the legislative provisions, judicial decisions, treaties and other authorities, texts and scholarly works on the subject matter. Further focus will be on critically analyzing judicial decisions where the courts were confronted with the issue in relation to the protection of the well-known trademarks.

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