User:Neelimanaveen

WELL KNOWN TRADE MARKS

In my view Well known trade marks can be applied for dissimilar goods. The need to protect well-known trademark over a broad range that goes beyond national borders was discussed among member countries of the Paris Convention starting in the 1920’s. As a result, the Provision of Article 6 bis of the Paris Convention pertaining to the protection of well-known trademark was first incorporated in the Hague text of the Paris Convention at The Hague in 1925.

“ARTICLE 6 bis (Protection of well-known trademarks)

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.”

Naturally, there is no requirement of existence of registration in that country, but an actual confusion or a risk of such confusion must exist for getting protection of well-known trademark. The Paris convention clearly states that well known mark cannot be applied to identical or similar goods otherwise the very definition become redundant.

Even according to the Trips agreement under “Article 16 (Rights Conferred)

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having his consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well known, account shall be taken of the knowledge of the trademark in the relevant sector of the public, including knowledge in that Member obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”

From the above Trips agreement it is clear that trademark in relation to those goods or services would indicate a connection between those goods or services. Trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.

Ex. Tata Motors is meant to deal with Cars where as samir manufatures chappals by name Tata here there is no connectivity at all and no confusion exists because from the above factors it clearly stipulates that wellknown trade mark should be recognized by the relevant sector of the public

Relevant Sector means the persons those who are dealing in a particular business can be called as relevant sector but not the ordinary people so; confusion never exists when a well-known mark is applied for a dissimilar good.

Ex. Tata Motors deals with cars where as the other car manufacturers recognize it. Because they are in the same relevant sector. Coming to the ordinary person view he may think that Tata is manufacturing chappals but never it happens because the very purpose of the definition becomes in vain. Here ordinary person view is not taken for consideration of the well known trade mark; hence confusion in the minds of ordinary person never exists.

First to File Principle has been taken from Asia European Meeting where two applications are lodged in respect of an identical or similar trade mark relating to identical or similar goods or services. When this is the case, the trade mark right is granted to the first applicant.

Conclusion: It is very clear from the above Paris convention and from Trips Agreement that Well known Trade Marks should not be applied for Identical or similar goods. But never the Trips agreement or Paris convention said that it could not be applied for dissimilar goods. Well Known Trade mark can be applied to dissimilar goods up to Dilution act comes in to the picture.