Lakshmikumaran & Sridharan
On February 24 2014 the Delhi High Court restrained Delhi-based coaching institute FIIT JEE Limited from using the BRAHMOS trademark in relation to educational activities. The court also recognised it as a well-known trademark to be protected even in respect of dissimilar products and services.
Brahmos Aerospace Pvt Ltd, a government company, is the owner and registered proprietor of the BRAHMOS trademark. Brahmos Aerospace stated that the mark was coined as a juxtaposition of the part of the names of two rivers, the Brahmaputra and the Moskva. Brahmos Aerospace also stated that it had adopted the mark in 1995 and used it in respect of several missiles, as well as in the arena of scientific research, training and knowledge dissemination. Brahmos Aerospace also claimed to be the owner of the domain names 'www.brahmos.com' and 'www.brahmand.com' for the purpose of educational activities. In addition, Brahmos Aerospace submitted details of promotional activities and sales figures in support of use and goodwill of the BRAHMOS trademark in India.
Brahmos Aerospace claimed that the BRAHMOS trademark was a well-known trademark under Section 2(1)(zg) of the Trademarks Act 1999, which defines a ‘well-known trademark’, in relation to any goods or services, as a mark which has become so well known 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 the rendering of services between those goods or services and the person using the mark in relation to the first-mentioned goods or services.
FIIT JEE, on the other hand, claimed to be tutoring prospective engineering students for several entrance examinations in India and promoting its educational activities under the BRAHMOS trademark. FIIT JEE filed multiple defence claims, primarily on the following grounds:
- Brahmos Aerospace’s trademark was not distinctive;
- It was available in the public domain;
- There was no similarity between the goods and services of Brahmos Aerospace and those of FIIT JEE; and
- FIIT JEE had adopted the mark in good faith.
In addition, FIIT JEE claimed that it did not use the BRAHMOS mark in trade or to denote any connection with Brahmos Aerospace. Regarding the question of domain names, FIIT JEE argued that all of the aerospace industry education and training programmes organised by Brahmos Aerospace were conducted under the name Brahmand via the website www.brahmand.com, not Brahmos. FIIT JEE also pointed out that the www.brahmos.com website pertained to missiles rather than educational or training programmes, as claimed by Brahmos Aerospace.
The court ordered an ad interim injunction restraining FIIT JEE from using the BRAHMOS trademark for any educational activities or as part of its domain name in a way that amounted to infringement of Brahmos Aerospace’s mark. On the question of infringement, the court held that there had been prominent use of the BRAHMOS trademark by FIIT JEE in advertisements and promotional materials, despite its umbrella mark being FIIT JEE. The court further held that FIIT JEE has adopted the BRAHMOS trademark purely with the intention of taking undue advantage of Brahmos Aerospace’s mark.
In arriving at this decision, the court also considered whether the BRAHMOS trademark was a well-known trademark within the meaning of Section 2(1)(zg) of the act. In this regard, the court quoted extensively from the recent judgments in Bloomberg Finance LP v Prafull Saklecha (2013 (56) PTC 243 (Del)) and Rolex SA v Alex Jewellery Pvt Ltd (2009 (41) PTC 284 (Del)).
The court held that, based on the definition of a well-known trademark in Section 2(1)(zg) of the act, the BRAHMOS trademark was a well-known mark, since a substantial segment of the public in the aerospace industry associated it with Brahmos Aerospace’s supersonic missiles. The court further held that as a well-known mark, BRAHMOS was protected even in relation to dissimilar products and services, as per Section 29(4) of the act, which provides that a registered trademark is infringed by an unauthorised party if it uses the mark for dissimilar goods and services, provided that the mark has a reputation in India and has distinctive character and reputation.
Determining well-known status of BRAHMOS
A perusal of the judgment reveals that although the single judge cited Bloomberg and Rolex extensively in relation to well-known marks, Section 11(6) of the act, which lays down the factors to be considered when determining the well-known status of a particular mark, seems to have been ignored.
The following quote gives an insight into some of the important factors which may be considered when determining whether a particular trademark is well known, as held by the Delhi High Court in Tata Sons Ltd v Manoj Dodia (2011 (46) PTC 244(Del)):
"5. A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademarks need to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well. The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark."
Brahmos quoted extensively from Bloomberg and Rolex, but avoided any specific reliance on the Delhi High Court's findings in those decisions. The Indian courts have repeatedly reiterated the well-recognised and established principles for determining a well-known trademark, but Brahmos did not follow such principles.
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Lakshmikumaran & Sridharan
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