How Boroline joined the league of well-known trademarks in India

The other way to be recognised as a well-known TM is by the courts, which handles TM infringement and decides on well-known trademark, like the Delhi High Court’s recognition of Boroline.

In today’s world, we all have become brand-conscious, be it restaurants, FMCG, cosmetics, watches, car, shoes, bikes and jewelry. Such is our fascination that it is the brand that influences our eventual choice. In fact, one may not like to even change the newspaper for a new publication!

We are aware of brand names like Mahindra, Tata, Maggi, Amul, Castrol and DPS, among others. The list of such popular trademarks (TMs) has been uploaded to the TM registry. There are 281 trademarks that have been declared as well-known TMs in India Who is empowered to declare the status?

Recently, the Delhi High Court recognised 'Boroline' of GD Pharmaceuticals as a ‘well-known trademark’, according to the Trademarks Act. It ordered a company Cento to alter its "trade dress" to avoid any resemblance to the antiseptic cream, which has become a ‘household name’ in

India.

Cento was selling similar a near replica product called ‘Boro Beauty’. Following the court order, the company will have to stop using its type, kind and style.

What does this mean for someone trying to use the same name? Well, Section 11(2) of the Trademarks act talks about unfair advantage, which means applications may face rejection if they attempt to take unfair advantage of the reputation of a well-known trademark or if they could potentially harm the distinctiveness of such a trademark.

Well-known marks have acquired recognition and reputation over time both in India and abroad. The government fee for filing of each such application is Rs. one lakh. Its acceptance depends on the Registrar of Trademarks based on substantial evidence of the mark’s recognition and reputation, including market surveys, sales figures, advertisements and media coverage.

Now, the other way to be recognised as a well-known TM is by the courts, which handles TM infringement and decides on well-known trademark, like the Delhi High Court’s recognition of Boroline. Take the case of brand DPS (Delhi Public School). The registrar observed that the mark is well-known in the education and allied sectors. This means that anyone using the letter DPS in any form, type, kind, style or manner will be tantamount to infringement. To conclude, it is pertinent that one should choose and select a trademark that is fancy and arbitrary rather than descriptive and suggestive. Also, we need to be careful to see that we aren’t imitating, even unknowingly, a TM that is well known as it will send a wrong signal to customers and confuse them.

Well-known trademarks are assured a wider protection. We need to see the case of Burger King case; the Bombay High court has granted stay on the usage of the name of the Pune restaurant, while reversing orders of the lower court on the issue. There might be chances that Burger King will also be declared as a well-known TM, provided the American company provides substantial evidence for what it takes to qualify as a well-known Trademark.

(The writer is Head-Legal and IPR, Resolute Group and f

ounder of IPRAS)