‘GOODYEAR’ Declared As A Prima Facie Well-known Mark: The Concept Explained

Recently, the Delhi High Court had restrained a person from using the trademark Goodyear which is associated with and is a registered trademark of the multinational tire company, Goodyear Tire and Rubber Company. Along with that, the court also held that ‘Goodyear’ is prima facie a well-known mark belonging to The Goodyear Tire and Rubber Company. Being well-known accords numerous benefits to the mark, along with wider protection.

Facts:

The plaintiff, Goodyear Tire and Rubber Company had a registration of the mark ‘GOODYEAR’ in the USA since 1906 and was in use in India since 1920. The mark was subsequently registered in India in 1943, under class 12 pertaining to “tyres for vehicle wheels and inner tubes”. Further, the Company had also started selling lubricants under the ‘GOODYEAR’ mark itself. In 2019, the mark ‘AUTOMOBILI GOOD YEAR’ was registered for “industrial oil and grease, lubricants, lubricating oils, etc.”.

In February 2020, the Company, Goodyear Co. came across the registration filed by the defendant, Deva Nand for the mark ‘GOOD YEAR’, in relation to “brake oil, grease, gear oil, etc.”. Against this registration, a cancellation petition was filed by Goodyear Co. Further, on March 27, 2020, Goodyear Co. had filed for registration of ‘GOODYEAR’ in classes 1 and 4 on a ‘proposed to be used basis’. Against this application, a notice of opposition was filed by Deva Nand, as a result of which, the mark stood as ‘Objected’ in both the classes.

What is a Well-Known Trademark?

A mark which becomes so known and recognized with respect to any goods or services in the substantial segment of the public that, if used in relation to any other goods or services, the segment of the public is likely to draw a connection between the mark and the goods or services. The Section 2 (1) (zg) of the Trade Mark Act, 1999 defines Well-Known Trademarks as,

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”.

Further, a wide range of factors to be considered by the court in determining a Well-Known Trademark have been given in Section 11 of the Trade Mark Act, 1999. These include public recognition and knowledge about the mark and its promotion; the duration, extent, the geographical area of any use and promotion of the mark, including advertising or publicity and presentation and the record of successful enforcement of the mark, especially the extent to which it has been recognized as a Well-Known Trademark by any court or Registrar[1].

Use or registration and recognition by the public at large in India are not required for having protection under a Well-Known Trademark. Neither is it important to have an application filed in India for registration. Notably, a Well-Known Trademark does not need to be recognized by the public at large; the recognition by a relevant section of the public in India is adequate for its determination as mentioned. Further, the absence of any distinctive character is not a ground of disentitlement for a Well-Known Trademark. The fact that the mark is either well-known, or has been registered, or an application has been filed for its registration in any jurisdiction other than India is also not a ground for disentitlement.

Once recognized as a Well-Known Trademark, the mark is entitled to a wide range of protection, in not only identical goods or services but in dissimilar or entirely different goods or services as well. The registrar will not allow the registration of a mark that is identical to or similar to the well-known mark. As per Section 11 (10) of the Act, marks that are intended to misuse and damage the repute or distinctive features of the earlier mark and are deceptively similar to a Well-Known Trademark are prohibited registration. Further, even those trademarks that though not similar to any earlier Well-Known Trademark, but the use of which “without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier Well-Known Trademark”, will also be disentitled to registration. In such cases, the burden is placed on the defendants to either show that there is no such existing Well-Known Trademark or that the use of their mark without due cause will not damage the distinctive character and repute of the pre-existing Well-Known Trademark.

Judicial Approach to Well-Known Trademarks

The Indian judiciary is recognized for its liberal and activist approach towards effective protection and enforcement of rights. When it comes to the protection of Well-Known Trademarks, it is no different and has emerged as one of the most progressive institutions. The first-ever case concerning Well-Known Trademarks in India was the Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd[2], famously known as the Caltex Case.  It was observed by the Bombay High Court that even if goods and services used are dissimilar, there is a series of “powerful factors” that cause a threat to the “holding capacity” of the pre-existing mark, which may ultimately cause deception or confusion. The court held that “the opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark “Caltex” on them would be the goods of the opponents”.

The Daimler Benz Akietgesellschaft v Hybo Hindustan[3]is another interesting precedent with respect to Well-Known Trademarks, wherein a company was restrained from using the term “Benz” for dissimilar goods, i.e., for a brand of underwear. It was held that owing to the transborder reputation and the reputation of the brand, the court was obliged to extend protection even beyond the class of proprietor’s goods and services.

N. R. Dongre v Whirlpool (1996)[4], was the case where the concept “transborder reputation” had received a dominant and strong recognition by the Indian judiciary. The mark “whirlpool”, despite not being renewed by the plaintiff had received protection and infringement against the use of the same for washing machine by the defendant. The court had held that advertisement of the mark by the plaintiff had resulted in knowledge and awareness of the same in, and that amounted to “use” regardless of its actual existence in the market. The Court further held that:

“a product and its trade name transcend the physical boundaries of a geographical region and acquires a transborder or overseas or extra-territorial reputation not only through the import of goods but also by its advertisement. The knowledge and awareness of the goods of a foreign trader and its trademark can be available at a place where goods are not being marketed and consequently not being used”.

The decisions in Benz and Whirlpool are two examples of the bold commitment of the Indian judiciary to provide due to recognition to the transborder reputation of marks, extending protection to reputed and well-known marks to dissimilar classes as well, even excusing “non-use” of the mark. The concept of “use” has been given a wider interpretation, where mere advertisement without having even the physical existence was considered “use” in absence of real sales.

Conclusion

In the present case, the court had noted that the mark ‘GOODYEAR’ had been registered in India in Class 12 since 1943 and had been in use since 1920. It was further noted that it is one of the largest tire companies in the world, employing over 64,000 people in 21 countries around the world. The company enjoys extensive reputation and goodwill that was highlighted by the court via the fact that from 2014-2018, the turnover was to the extent of $50 billion. In the case of India, the net sales for the same time period were around $1 billion. In light of these, the court had held that ‘GOODYEAR’ is a prima facie well-known mark and the use of the same by Deva Nand led to infringement.


[1] Section 11(6), Trade Mark Act, 1999

[2] AIR 1969 Bom. 24

[3] AIR 1994 Del 239

[4] 5SCC 714

About Sonal Sinha 8 Articles
I am currently in the fourth year of BA LLB at Symbiosis Law School Noida. Over the years at law school, I have developed a keen interest and passion for IPR laws and like to research upon and write blogs on topics related to Trademarks and Copyrights law. I hope to bring some intriguing content your way through my articles at this platform. Apart from that, I am also an avid reader and a fitness enthusiast

Be the first to comment

Leave a Reply

Your email address will not be published.


*