Section 11(6) of the Act:
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including:
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) 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;
(iv) 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;
(v) 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.
In the present case[1], in order to prove that the mark of the plaintiff is a Well Known Mark, the Counsel for the plaintiff has set out the data available with respect to each of the five factors enumerated in Section 11(6) of the Trade Mark as being relevant in deciding whether a mark is well known mark.
- In order to provide data with respect to clause i: The plaintiff has mentioned the location of the stores, retail distributions and revenue generated in its activity report for the year 2021 followed by recognition of plaintiffs’ mark by various magazines.
- In order to provide data with respect to clause ii: the plaintiff provides that the mark was coined and plaintiffs’ Oran sandals having the said trade mark was conceptualised in the year 1997, by Mr. Pierre Hardy, Creative Director of Plaintiffs’ company and a famous French designer.
- The Oran Sandals were made with soft leather and characterized by a leather band, with the iconic H cut-out representing the Plaintiffs’ fashion house. The details regarding the mark celebrating its silver jubilee followed by advertising of the mark, sales receipts and how their sandals are also being used by the celebrities was provided by the plaintiff’s counsel.
- In order to provide data with respect to clause iii: The Plaintiff gives information regarding the Oran sandals being publicized in several international magazines globally, which is evident from the advertisement and listing of the Plaintiffs’ footwear on Plaintiffs’ website, publications in international magazines, news etc. Further details include publications of product catalogues since the year 1997 and listings on its own website.
- In order to provide data with respect to clause iv: The Plaintiff gives a brief history of registration of the H trade mark in France on April 15, 2015 under the application no. 4167976. Thereafter, vide the Madrid Protocol, the Plaintiff No. 1 filed an international application in Class 25. The Plaintiffs’ trademark was granted international registration on September 8, 2016, under international registration no. 1325552 and International Registration Designating India No. 3485491. The plaintiff enjoys registration in over 93 countries.
- In order to provide data with respect to clause v: Plaintiff provides information regarding proceeding instituted for the Plaintiffs’ trademark before the courts in Germany, wherein the Plaintiffs’ had obtained a preliminary injunction against the several third parties therein and thereafter the said third parties had also given an undertaking.
The counsel for the plaintiff points out that in a case where goods in question are intended to cater to a specific section of the public, he submits, therefore, that the knowledge or recognition of the trade mark for the purpose of Section 11(6)(i) and 11(7) has to be vis-à-vis that section of the public. Like in the present case the mark is of fashion industry, so the clauses under section 11(6) stands satisfied with respect to the renown of the mark in the fashion industry.
Conclusion:
The Court observes that the criteria enumerated in section 11(6) of the Trade Marks Act, read with Section 11(7), stand satisfied in the present case, so as to justify declaration of the mark as a well-known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act 1999.
[1] HERMES INTERNATIONAL & ANR v. CRIMZON FASHION ACCESSORIES PRIVATE LIMITED, CS(COMM) 919/2022 & I.A. 22377/2022
DUCTUS EDGE 