The Madras High court made a significant observation that a mere passing reference cannot determine a ‘well-known’ trademark as defined in section 2(1(zg) of the Trademark Act 1999 and Rules 2000. In order to determine a well-known mark, the necessary findings in the form of evidence and documents has to be produced. Otherwise, the mark cannot be accepted as being well known.
The petitioner is engaged in the business of manufacturing and marketing incense sticks and dhoop sticks. The adopted ‘Cycle’ brand name and being using the same since 1954. This house mark with device of cycle is registered under all the 34 categories of trademark classifications(as per Tradeamark Act 1958).
The respondent applied for ‘Cycle’ under class 21 in respect of brooms and other cleaning purposes. A writ petition was filed by the petitioner praying to quash the order passed by Intellectual Property Appellate Board(IPAB).
The Madras High Court has made significant observations with regards to two main pointers. Defensive registration( in the context of Trademark Act, 1958) and well-known marks(in the context of Trademark Act, 1999).The Court made comments in view of following two facts:
a. Whether the respondent’s mark be refused registration in the light of petitioner being a registered owner of “Cycle Brand” under all the 34 categories of trademark classifications.
b. Whether “Cycle Brand” trademark is a ‘well-known’ mark.
The court based it’s judgemet on the following grounds:
Common words are not entitled to protection under the defensive registration
The said mark is not an invented word
Non-user of the trademark should not enjoy monopoly in order to avoid any further mischief of trafficking in trademark and as a result prevent all bona fide users of such common words.
No evidence was adduced by the petitioner to show that the petitioner’s mark is a well-known mark within the meaning of Section 2(1)(zg) and Section 11(6), (7) and (8) of the Trademark Act 1999. The onus or the burden of proof is upon the one claiming ‘well-known’ mark registration.
Citing all the above aspects, the writ petition was dismissed.
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