There are a few indigenous brands that have grown with India, brands that have been so woven into the fabric of India by the hands of time. Most undoubtedly the name that is recognised in every nook and cranny of India is Amul, and the ‘Amul butter girl’ is undoubtedly the most recognised device mark in India. Earlier this year Amul was given the status of a well-known trademark by the Controller-General of Patents Design and Trademarks, through a notification, approving and categorising Amul as a ‘well-known brand’. Amul now joins the coveted list of 68 brands with the likes of Pepsi, Coca Cola, and Benz (to name a few).

This notification was a result of a case of infringement of the mark  in the name of “IMUL” owned by the ‘Ichhamati Co-operative Milk Producers Union Limited’ , the case went up to the IPAB ( Intellectual Property Appellate Board ). The Board upholding the popularity of the Amul mark, held that the impugned mark was phonetically similar to Amul and was likely to cause confusion among consumers. It is also important to note that once the status of a well-known mark is granted, the mark is deemed to be so for all future proceedings.

What is a well known trademark?

To understand the significance of this status we must first look at what a well-known trademark means. The Indian Trademarks Act 1999 defines a well-known trademark under Section 2(1) zg.According to this section a well-known trademark is one that has been so etched in the minds of the people that they relate the trademark to the company and believe that any goods or services possessing the trademark or a similar one to have a connection to the company.

For example a manufacturer of confectionery with the name “TATA” would result in people believing that the sweets were a product of the TATA group. Hence a well know trademark is given a blanket protection to save it from any infringement under any class of goods. This is done not only to protect the owner of the trademark from companies that try to leach on to their goodwill, but also the consumers who buy the products relying on the trademark.

It is to be noted that on the question of what is a well-known trademark depends on the Registrar. For this the Registrar has to take into account various facts stated in Section.11 (6) to (9), and any other relevant facts.

It is also to be noted that the granting of the status of a well-known trademark is determined by the Registrar, for which he has to consider the facts stated in Section 11(6) to (9), and any other fact he thinks relevant. In order to understand and trace the reasons for the decision of the Registrar let us looks at the conditions that make Amul a well-known Trade mark:

1. knowledge of the well-known trademark among the people as a result of sales promotion;

2. duration, extent and geographical area of the trademark;

3. duration and extent of the advertisement and promotion of the trademark;

4. duration and geographical area of registration publication of registration;

5. the extent to which the trademark has been upheld by the courts or the Registrar;

6. number of actual and or potential consumers;

7. number of persons involved in the channels of distribution;

8. the business circle dealing with the goods;

9. where the trademark has been determined to be well known in at least one relevant section of the public.

A well-known trademark is protected under section 11(10):Which states that while considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall Protect a well-known trademark against identical or similar trademarks.

It is indeed a good news that Amul, one of the most popular brands in India has finally been given the status of a well-known trademark, though it is to be pondered if this should have been given much earlier. It is now worth a wait to see what would happen to the multitude of companies who have registered “Amul” as their trademark in different classes, the namesake hosiery brand being the most popular infringer.

Also going through the list of well know trademarks it is but natural to ask why the number of well-known Indian trademarks are so few in number.

This article has been authored by Shwetha, an IP Law practitioner.