Transborder Reputation Of Trademarks In India
A trademark is a visual representation used on a product which helps customers to identify the manufacturer. It may be in the form of a word, symbol, device, name, letter, numeral, colour, combination of colours, label, packaging, shape of goods or a combination of them. Trademarks in India are protected under the Trade Marks Act, 1999. The Act provides for registration of trademarks in India. It was enacted following the Paris Convention of Industrial property, 1998- to which India was a signatory. The Trade Marks Act furthered India’s commitments to modernise its intellectual property laws in order to provide for recognition of trademarks from all over the world.. The Act also protects unregistered trademarks under passing off action where other proprietors will not be allowed to imitate an unregistered trademark which has been in use and has generated reputation and goodwill through continuous usage. Thus, it is clear that reputation is an important matter in protection of trademark, whether a mark has been registered or not. In fact reputation and continuous usage outweighs even the rights of a registered user if cogent evidence can be produced about such prior use.
A trademark essentially needs to be registered under Indian laws in order to be protected in the territory of India. Consider that a reputed international company about to start operations in India. When it applies for registering its trademark, what if a similar mark has already been granted to an Indian applicant? The answer lies in the concept of transborder reputation or Reputation that spans across borders.
Spillover Reputation Or Transborder Reputation
“In the era of information, ignorance is a choice”, goes the popular saying. We are bombarded with knowledge from all nooks and corners of the world. We are familiar with famous trademarks even before they are launched in our country. As our awareness increases, so does the tendency of some manufacturers to imitate trademarks popular in other countries- since they are not yet registered in India.
Transborder reputation is a concept where reputation of popular trademarks in other countries is recognised by a particular country. This prevents applicants in that country from registering identical or similar trademarks in their names.
N.R. Dongre And Ors. vs Whirlpool Corporation And Anr
The concept of Transborder reputation was upheld by the judiciary in this landmark case. The plaintiff Whirlpool Corporation is an internationally renowned brand of washing machines. The defendant N.R. Dongre was allotted the trademark ‘Whirlpool’ in 1986. This was contested by Whirlpool, which was dismissed by the Assistant registrar of trademark due to non use and non reputation of the trademarks in India. The plaintiffs sought an appeal before the Delhi High Court which ruled in their favour after recognising the transborder reputation of the trademark ‘Whirlpool’. The hon’ble court said that no trader shall be allowed to appropriate the mark of another trader though it may be operated in another country. It does not matter as to how the public become aware of the existence of such goods- It may be due to advertisements or other means. The reputation and goodwill of such trademarks in India must be protected. There is every possibility that buyers may be deceived into purchasing the goods if such trademarks are not protected. The court, thus recognised whirlpool as a well known trademark and prevented the defendants from using the mark in India.
Royal Bank of Scotland v. Sharekhan Limited
The trademark MAXTRAD had been acquired by the plaintiff Royal Bank of Scotland from ABN-AMRO in 2007. It was a platform for its online users to access financial information globally. When they learned that the defendant had been using the trademark MAXTRADE in connection to its share broking services, they contested that the name was deceptively similar to MAXTRAD. The Delhi High court recognised the spillover reputation of the trademark in India.
Laverana Gmbh & Co Kg vs Mac Personal Care Pvt Ltd & Ors
The trademark Lavera had been registered by plaintiff Laverana Gmbh for cosmetics in Germany, Singapore, France, Ireland, Japan, etc. The product ‘Mac’s Lavera’ by Mac Personal care were contended to be deceptively similar to the trademark of the plaintiff. The court accepted the view of the plaintiff that consumers in India are aware of the reputation of their products. They also claimed to have spent millions in web based marketing which made the products popular in India. Thus, the transborder reputation of Lavera was upheld.
Ruston & Hornby Ltd. v. Zamindara Engineering Co
In Ruston & Hornby case, the Supreme Court said that there is no requirement that the plaintiff must carry on business in India if he wishes to bring an action for passing off, since he can prove the existence of reputation acquired in the country.
Apple Computer Inc. vs Apple Leasing & Industries
In this case, the High Court of Delhi held that if reputation of a trader has travelled to another country on the basis of extensive advertisements and publicity, It does not matten if his business is carried out in another country. Once the reputation has been acquired, another trader could be stopped from using the trademark to protect the reputation of the trader who was not trading in the country.
Safeguarding Reputation Across Borders
It can be concluded that reputation gained by a trader in foreign lands is a valid reason for grant of exclusive rights over the trademark. The Supreme court once mentioned that the whole world is to be seen as one market. Therefore, It is not a worthwhile risk for a trader to imitate trademarks popular in other countries. In Milmet Oftho Industries & Ors. Vs. Allergen Inc. The Supreme Court declared thus: “The mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market.”
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