Comfort Travel is a brand name for the manufacturer of luxury cars by ComfoCar Ltd. The company is based in Japan. It has earned world-wide reputation of producing varieties of luxury cars. It has presence in many countr

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · December 2019
Comfort Travel is a brand name for the manufacturer of luxury cars by ComfoCar Ltd. The company is based in Japan. It has earned world-wide reputation of producing varieties of luxury cars. It has presence in many countries across the world. In India it has acquired registration in different classes of luxury cars for its trade mark "Comfo", "ComfoTrvl" and "Comfo Device" during the years 1989-2003. It launched the world-wide world's first commercial hybrid car called "Deception" in Japan in the year 1997 and in other countries like UK, Australia, the USA etc. during the year 2000-01. The company claims to have registered the trade mark 'Deception' in different countries as early as the year 1990 (in Japan) and in other jurisdictions around the world. In India the car was released in the year 2009 and till then the company had not registered the mark in India. It plans to enter in the Indian market in the year 2008 with new luxury car. The Company discover that the Company ZZZ had not only got the "deception" registered in India way back in the year 2002-03 for all types of auto parts and accessories but they had also been using the said trade mark in carrying out trade in such auto parts and accessories. The first party or plaintiff therefore approached the trade mark registry for cancellation of the registered trade mark of the defendant and also filed the suit in the court questioning the other party's using the well-known trade mark of the first party without their authorisation and taking unfair advantage of the reputation and goodwill of the first party earned over a period of time across the globe. Plaintiff prayed for permanent injunction restraining the defendant from using the plaintiff's registered trade mark and permanent injunction restraining the defendant from using the well known unregistered marks "deception". The defendant replied that the they are using the mark 'Comfo', 'Comfo India' and 'Comfo device' on the packaging materials in which the auto parts manufactured by them are packed for the purpose of item identification and nothing more. Since operating in the same area of industry they are supposed to indicate the cars for which the spare parts have been manufactured by displaying the name on the packaging of the products. Therefore, it is honest use under section 30 and therefore protected under the Act. With regards to the 'Deception' they had registered the mark in year 2002 and continuously using same since the year 2001. They have been regularly supplying the auto accessories to various automobiles giants. By the time they have acquired market reputation for the mark and their services. Since they are operating in India from a time when the plaintiff has not established the product, therefore they are entitle to have the trade mark in their favour. In the background of the above facts, analyse the following issues: What are the essentials for a mark to be a well-known trade mark ?

Answer & Explanation:

Being the signatory of the Paris Convention and TRIPs Agreement, India recognises the concept of a well known trademarks. Under section 2(l)(zg) of the Trade Marks Act, 1999, "well known trade mark", in relation to any goods or services, mean 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 and services. A mark, which has been designated as a well-known mark, is accorded stronger protection. The Trade Marks Act, 1999 casts an obligation on the registrar to protect a well-known mark against an identical or similar trade mark. While determining whether a trademark is a well-known trade mark, takes into account all the facts which considers relevant for determining a trade mark as a well-known trade mark including the following factors: That the trade mark is well known to the public at large in India; The number of persons involved in the channels of distribution of the goods or services; The number of actual or potential consumers of the goods or services; The duration, extent and geographical area of any use of such trade mark; The business circle dealing with those goods or services. Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).

Topics: Trade Marks

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