In India, the Trademarks deputes were earlier governed under the provisions of Trade and Merchandise Marks Act 1958. At the relevant point of time, provisions of Trade and Merchandise Act 1958 was found to be sufficient enough to handle the disputes pertaining to Trademarks Rights.

By passage of time , the Indian economy were made open to all. The policy of economic liberalization has opened Indian Market to all. Very soon, we have witnessed many multinational companies entering into Indian Markets.

Naturally as the India has opened it's economy for international markets, need was felt to update the provisions of law pertaining to Trade Marks Laws. Accordingly Trademarks Act 1999 was introduced. Many new provisions were introduced in this Trademarks Act 1999, one of which was introduction of concept of recognition of Well Known Trademarks.

Though provisions of well known trademark has been included in the Trade Marks Act 1999, however there were very few Judgements explaining the significance attached to Well Known Trade Marks Act 1999.

In a recent Judgement dated 19.09.2022 passed by the Hon'ble Single Judge, Delhi High Court namly Jyoti Singh , H.J in Commercial Suit No. CS Comm 1225 of 2018 , titled as Dharampal Satyapal Limited & Anr vs Mr. Youssef Anis Mehio & Ors , the significance;/attached to well known Trademark has been explained.

This case was pertaining to Well Known Trademark RAJNIGANDHA in relation to flavoured Masala. The subject matter Suit was filed against use of trademark RAJNIPAN in relation to Chillum Flavours.

The Plaintiff also asserted that it's Trademark RAJNIGANDHA has been declared as a well known Trademark by High Court of Delhi in Suit titled as Dharampal Satyapal Limited Vs Suneel Kumar Rajput and other within the provision of Section 2(1)(zb) read with Section 2(1)(zg) of the Trademarks Act 1999.

The Plaintiff asserted that as the Plaintiff's Trademark has been declared as well Known Trademark within the meaning of Section 2(1)(zb) read with Section 2(1)(zg) of the Trademarks Act 1999, the same was entitled to better protection. The another fact which was alleged by the Plaintiff was that the Defendant has not only copied the similar Trademark RAJNIPAN but also used identical color combination.

The Hon'ble High Court of Delhi discussed the significance of a Trademark declared as a well known Trademark in the following words:

19.Given that the trademark RAJNIGANDHA is a:
"well-known" mark as defined under Section 2(1)(zg) of the Act and entitled to a high degree of protection, even in cases of dissimilar goods the owner of the mark is required to be shielded.

Present case stands on a better footing, as the impugned goods of the Defendants are Chillum flavours, registered in Class 34 and the product of the Plaintiffs is Pan Masala, also registered in Class 34.

The goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical, goods are allied and cognate and the trade channels are identical with same consumer base."

Thus it is apparent that the Hon'ble Court has observed that when a Trademark is declared as well known Trade Mark within the meaning of Section 2 (1) (Zg) of the Trademarks Act 1999, it gets protection in relation to different kinds of goods also.

Though in the subject matter case , competing products of the parties were falling in class 34 and they were allied and cognate in nature, the court observed that in case of well known trademark, right extends to different kind of goods and services as well.

The same is clearly borne out from bare perusal of Section 2 (1) (Zg) of the Trade Marks Act 1999. The said provision is reproduced as under:

Section 2(1)(zg) in The Trade Marks Act, 1999
"(zg) "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services."

Section 2 (1) (Zg) of the Trademarks Act 1999 required that only those Trademarks can fall in this category that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

The natural consequence of the same would be that in case a Trademark is declared as Well Known, the court will presume possibility of confusion even in relation to different kinds of goods and Services.

This Judgement clearly laid down that once a Trademark is declared as well Known Trademark within the meaning of Section 2 (1) (Zg) of the Trade Marks Act 1999, the right holder enjoys a better protection in the eyes of law.

Right holder of a declared well known Trademark can also restrain the other parties from using same or similar Trademarks in relation to different Trademarks also. Accordingly in the present case also, the Plaintiff was granted protection against user of impugned Trademark RAJNIPAN of the Defendants in relation to Chilum flavour also.

Case Law Discussed:
Case Title: Dharampal Satyapal Limited & Anr vs Mr. Youssef Anis Mehio & Ors
Judgement date:19.09.2022
Suit No. CS Comm 1225 of 2018
Name of Court: Delhi High Court
Name of Hon'ble Justice: Jyoti Singh, H.J.

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
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