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Cross-class trademark protection without a formal well-known declaration

The Delhi High Court has clarified that a mark need not be formally declared well-known to claim protection across classes. What proprietors should record now.

The decision

In a dispute concerning the Ghostbuster mark, the Delhi High Court has held that a trade mark need not be formally declared well-known in order to obtain protection across classes of goods and services.

Why this is significant

Section 11(2) of the Trade Marks Act, 1999 protects a well-known mark against registration of an identical or similar mark for dissimilar goods or services, where use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. Section 11(6) sets out the factors the Registrar must consider in determining whether a mark is well-known, and Section 11(8) provides that a mark determined to be well-known in at least one relevant section of the public in India by any court or Registrar shall be considered a well-known mark for registration under the Act. The Registry also maintains a list of well-known marks, entry on which requires a separate application and a substantial fee.

The point of confusion

Proprietors have often assumed that entry on the Registry's list is a precondition to cross-class protection, and that without it they are confined to the classes in which they are registered. The Court has now confirmed that the statutory determination and the administrative list are not the same thing. A mark may be found to be well-known by a court on the evidence before it, in the very proceeding in which protection is sought, without any prior declaration.

What this means

The formal declaration remains valuable. It is evidence, it is public, and it deters. But its absence is not a defence. A defendant who says "your mark is not on the list" has said nothing that answers the case, provided the plaintiff can prove reputation on the material.

What proprietors should record now

The finding turns on evidence, so assemble it before you need it. Maintain, on a continuing basis: dated evidence of the duration and geographical extent of use; turnover and advertising spend attributable to the mark, year by year; unsolicited media coverage; awards and rankings; evidence of consumer recognition, including surveys where the value justifies the cost; and a register of successful enforcement, including undertakings, settlements and injunctions obtained. This material is difficult and expensive to reconstruct once litigation has begun, and it is the difference between asserting reputation and proving it.

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