Well-Known Trademarks: Pliability of Indian Courts in brand protection and beyond

Extended Case Analysis on:
Hermes International & Anr. v Crimzon Fashion Accessories (Delhi High Court, 2023/DHC/000961)

Introduction

This comment is pursuant to the case of Hermes v Crimzon.[1] Through this note we shall vitally focus on the stance of Indian courts with respect to ‘well-known trademarks’ and their legal application around the same.  Although well-known trademarks are usually not contended, but nevertheless it becomes imperative to also understand the functioning of substantive law and the distribution of powers to the court in this regard. The primary point of reflection of this note shall be the scope of such well-known trademarks and the ways in which infringement has been tackled with, by also trying to understand the aspects of passing off along with its genus – the doctrine of dilution.

Disputes and the Outcome of the Case

The Plaintiff brought this lawsuit to prevent the Defendant from using a mark that is confusingly or identical to their registered “H” trademark. Pursuant to which on December 23, 2022 the Defendant was found guilty as the court decreed in the favor of the Plaintiff. After the order, on February 9 2023, the Plaintiff filed a prayer requesting that its mark be declared “well-known.”[2]

In this prayer, the Plaintiff addressed each of the five criteria listed in Section 11(6) of the Act that determine whether a mark qualifies as a well-known trade mark, and the arguments are as follows:

(i) Re: Factor-I The public’s awareness of the trademark in the pertinent domain, including information acquired in India as a consequence of trademark marketing.

The products bearing the Plaintiffs’ H trade mark are on display at the Plaintiffs’ outlets in Delhi and Mumbai. A number of catalogues have been specially chosen by the Plaintiffs for their Delhi and Mumbai outlets.  A number of magazines, including Vogue, Harper Bazaar, and others, checked out and acknowledged the plaintiffs’ sandals bearing the H trademark.[3]

(ii) Re: Factor 2: The duration, extent and geographical area of any use of that trade mark.

In 1997, the Plaintiffs registered their H trademark, and they conceptualized their Oran sandals with the same trademark. Sandals with a leather band, smooth leather build, and an iconic H cut-out representing the Plaintiffs’ fashion house were inspired by the Ndebele tribe of Africa’s decorations. Since the mark’s creation, the plaintiffs have utilized it in a variety of goods, most notably sandals, including Oran, Oasis, and Legend sandals. A variety of footwear products have been sold in the market that display the Plaintiffs’ H trade mark.[4]

(iii) Re: Factor 3: 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.

Since the start, the plaintiffs have engaged in a number of significant promotional endeavours. The advertisement and listing of the Plaintiffs’ footwear on their website, as well as articles in international magazines, news, and other sources, clearly demonstrate that the Plaintiffs’ Oran sandals received significant attention and have been featured in a number of international magazines worldwide.[5]

(iv) Re: Factor 4- 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.

The H trade mark registration application was submitted by the Plaintiffs in France. Following that, the Plaintiff filed an international application in Class 25 in accordance with the Madrid Protocol. The worldwide registration numbers 1325552 and 3485491, which designate India, respectively, were assigned to the plaintiffs’ trademark. In addition, the Plaintiffs have national and/or international registrations in more than 93 nations, including the United Arab Emirates, France, Canada, Switzerland, Singapore, Australia, and others.[6]

(v) Re: Factor 5- 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.

The plaintiffs have been cautious in defending their trade mark rights against infringement by other parties. In accordance with the aforementioned, the Plaintiffs initiated legal procedures for their trademark in German courts. They were successful in obtaining a preliminary injunction against a number of third parties, and the parties in question thereafter provided an undertaking.[7]

(vi) For 11(6) and 11(7) the reference to the “relevant sections of public” is clarified as to why it is necessary to evaluate the trade mark’s awareness or recognition in relation to the relevant segment of the public. When the products in question are meant to satisfy a certain type of people.

For instance, in this case, plaintiff argues that the mark is entitled to be certified as a well-known trade mark because it belongs exclusively to the fashion industry and the information he has filed with the authorities shows that the mark’s recognition in the industry satisfies the requirements listed in Clauses (i) to (v) of Section 11(6).[8]

The court’s ratio was simple and precise due to clear submissions made in the arguments presented. The findings substantiated the requirements of the proviso aptly, Based on the amount and type of factual information submitted, court is certain that the requirements listed in Sections 11(6) and 11(7) of the Trade Marks Act are met in this particular instance, as to support the Act’s Section 2(1)(zg) designation of the mark as a well-known trade mark.[9]

Passing Off and the Doctrine of Dilution

Now the present case presents an example of almost zero contentions as to marking of the well-known trademark, even though the initial filing was for infringement against Crimzon accessories. Although passing off typically rest on misrepresentation and confusion; dilution is merely a genus of damage within passing off and reliant upon a determination of confusion or deception, but not always.[10] Even if the statutory requirements for well-known marks and remedies for infringement are provided, the courts have and continue to go beyond such givens in order to arrive at their dictums. According to Section 29(4)(c) of the Trademarks Act,[11] if a registered trademark has a “reputation” in India and its use unfairly exploits or harms its distinctive character or repute, it may be violated even when it is used in connection with goods or services that are not similar to those for which it is registered. This clause depends on the idea of “dilution” rather than the standard “likelihood of confusion” test.[12]

In Whirlpool Co. & Anr vs. N.R. Dongre,[13] the defendant company was producing and marketing its goods under the well-known trademark “Whirlpool.” Although the company was selling those machines illegally and at lower prices, it was held that this was wrong because of the trademarks’ trans-border reputation and that it would violate their exclusive rights to make illegal profits. Even though the company wasn’t using the trademark in India at that point as it hadn’t renewed its registration. The Trademark Act of 1999 states that the registrar must take into account several essential factors when determining whether a trademark is well-known. These include the owner’s exclusive rights, as recognized by the registrar or any court, trademark services and the product’s commercial circle must be well-known and the business circle of the product.[14]  It becomes evident that well-known trademarks do enjoy broader benefits, but that is not the entirety of it. Such cases are susceptible to being wronged, so the courts conceptualize wider arguments and timeline of events in order to form an opinion, which truly becomes necessary in certain situations. Just like in the case of Ishi Khosla v Anil Aggarwal,[15] The Delhi High Court ruled that a product’s trademark might gain popularity among customers – even overnight in response to consumer demand, product promotion, and advertising. Therefore, a limited period of use is not required.[16] This ruling again sought a wider interpretation of the proviso.

Scope of Well Known Trademarks

The scope extends to include protection within other classes as well. Identical trademarks to any already-registered well-known trademark that is about to be registered by another party for a distinct class of goods or services- are not eligible for registration because, the already-registered well-known trademark is already well-known in India and its business and reputation may be affected if it is used for the other class by another party. For instance, since Hyundai is a well-known brand associated with automobiles, it cannot be utilized or registered in the chocolate or any other similar industry. The Bombay judiciary preserved the trademark “Kirloskar” in the Kirloskar Diesel Recon Pvt Ltd vs. Kirloskar Proprietary Ltd case.[17] This trademark has grown in popularity in India, and if another party uses it for a few other businesses, the public and market may conclude that the plaintiff has expanded its business, which could have a negative impact on the plaintiff’s original reputation.[18]

Furthermore, trans-border reputation has also lead to different interpretations, again enlarging the scope of such trademarks. The case of M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle,[19] made the observation that the use of a trade mark does not always imply that the goods bearing it are really sold. A trademark may be used in any way.[20]

Another way in which the extent is determined in a rather unconventional form, is through the remedies for infringement. These include: (i) Removal of infringing trademark, (ii) Preventing any company or group involved in trademark infringement of the original, well-known trademarks, (iii) If a mark is identical to an existing trademark across all classes of products and services, it cannot be registered (iv) Punitive damages will be levied against the intruders who committed violations.[21] The Delhi High Court ruled in Time Incorporated v. Lokesh Srivastava that the true owners of intellectual property will receive both compensation and punitive damages. In the current instance, the plaintiff was awarded compensatory damages and punitive damages in an amount of Rs 5 lakh each.[22]

Conclusion

Hermes v Crimzon gave a well-sought insight into the set requirements as per the statutory provisions mentioned for the determination of well-known trademarks. However, through this paper we accounted findings that also showed additional things that also simultaneously sustain alongside the substantial law. Passing off and dilution theory helped us distinguish between the “reasonable confusion test” as both these terms are sometimes used interchangeably, even though they mean different things. Nevertheless, the ways of infringing are a part of the scope of trademarks. Here, the scope of well-known trademarks is not restricted to the law. The reasoning behind deciding of the cases pertaining to reputation and well-known trademarks extends to the judicial interpretation as deemed fit by the courts with respect to the fact-scenario and timeline.

Hence, well-known trademarks enjoy a better array of protection as compared to other trademarks because of its very nature. But it is equally important to remember that such protection is not due to the content of law but rather because of the implications that come with the reputation and the expectation that interpretation posits in front of the court.

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[1] Hermes International & Anr. V Crimzon Fashion Accessories 2023/DHC/000961

[2] Ibid (n1)

[3] Ibid (n1)

[4] Ibid (n1)

[5] Ibid (n1)

[6] Ibid (n1)

[7] Ibid (n1)

[8] Ibid (n1)

[9] Ibid (n1)

[10] Dev Gangjee, “The Polymorphism of Trademark Dilution in India”, Transnational Law and Contemporary Problems, Vol. 17 (2008)

[11] Trademark Act, 1999 section 29(4)(c)

[12] Ibid (n2)

[13] Whirpool Co & Anr. v N.R. Dongre 1996 PTC (16) 583 (SC)

[14] Ibid (n3)

[15] Mrs. Ishi Khosla vs Anil Aggarwal And Anr. on 25 January, 2007 (34) PTC 370 Del

[16] Ibid (n7)

[17] Kirloskar Diesel Recon Pvt Ltd vs. Kirloskar Proprietary Ltd AIR 1996 Bom 149

[18] Ibid (n9)

[19] M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle  1994 P.T.C. 83

[20] Ibid (n11)

[21] Trademarks Act, 1999 section 29

[22] Time incorporated v Lokesh Srivastava 116 (2005) DLT 599