Trans border reputation of a mark by anamaulida

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        <p><u>TRANS BORDER REPUTATION OF A MARK AND INDIAN CASE LAWS ON
THIS CONCEPT.</u></p>
<p><u>Introduction:-</u></p>
<p>A trademark distinguish the goods and services of one person from the
good and services of other person, it is useful to indicate  the source
of origin of a particular goods and services. For example the trademark
"RELIANCE" distinguish the goods of RELIANCE from those of say, "TATA",
trademarks are associated with brand identity, the purpose of which is to
make a correlation between the particular products  and in the minds of
consumer's.</p>
<p>The concept of Trans -border reputation becomes the most debatable
issue at international level with the expansion of trade and business of
the companies. Goods and services are not limited only to the country of
origin but crossed the territory of the state. In the era of
globalization the goodwill and reputation of a mark become significant.
The doctrine of Trans -border reputation lies at the root of well-known
trademarks and the legal protection of which is firmly entrenched in
trademark jurisprudence. Few year ago the theories relating to
acquisition of a trade mark was entirely different from now that, the
trademark must be used in respect of the goods in the concerned country
and many suits of the aggrieved person was refused on the above mention
ground.</p>
<p>Now the scenario is completely changed, with the opening of economy
and expansion of concept of globalization the law of different
jurisdiction has started to recognized action by foreign plaintiff on the
basis of reputation of his goods or services on the foreign soil and have
departed from the old theory of use of the mark in concerned country for
the success in Passing-off action. In order to get the protection of
trademark in countries other than the origin, mark must have a reputation
and goodwill.</p>
<p>In order to protect a mark it is not obligatory on the part of
plaintiff that the mark shall be registered. Today the goods and services
of a company's spread all over the world, they have build their goodwill
and reputation in the market of different geography through their
extensive use and  by expending lot of money on the promotion of their
respective goods and services. Though a product is not available in a
particular territory but through electronic media or other resources the
people can identify the source of origin of the goods.</p>
<p>After taking into consideration of the above facts the concept of
Trans -border reputation evolved. Trans-border reputation is contained
under section 35 of Indian Trademark Act, 1999 and its offers protection
to foreign trade marks on the basis of their international reputation,
thereby complying the requirement of article 16 of TRIPs, which seeks
better protection and treatment of trademarks.</p>
<p><u>Reputation: -</u></p>
<p>It is a most unclear term in the field of Intellectual Property Law.
In absence of statutory definition, acquisition of reputation depends
upon the usage of a particular goods and services in connection with
business. The precise extent use required depends upon the nature of
mark, name or indicia used and of the business or goods concerned.
However, it is very difficult for the plaintiff to prove the reputation
of a mark in different origin as every country has their own criteria to
determine the reputation of marks.</p>
<p>The question of reputation was raised in case of L<u>eahy vs. glover
(1893)10 RPC 141 </u>wherein it was held that in order to succeed the
ground of passing-off the first essential for the plaintiff is to prove
the existence of a business in which there is a goodwill and parts of its
reside in exclusive association of the name, mark or other indicia relied
on with the business. The same proposition was applied after 70 year
in<u> Star Industrial Co. Ltd. Vs. Yap Kwee Kor (1976) FSR
256.</u>Wherein Reputation was defined as essential specie of a personal
property and transferable with the business. Reputation is essential to
claim for passing-off action. The important thing is that
misrepresentation is based on reputation of plaintiff's mark in the mind
of public. The second is that plaintiff's reputation can suffer if the
goods passed off by the defendant are inferior. The third is existence of
goodwill.</p>
<p>The concept of reputation is new to the Indian trademark law. In case
of <u>General Motors Corporation Vs. Yplon</u> , Where the court gave its
own explanation on reputation that reputation involved some kind of
knowledge, where in was known by a significant part of the public
concerned by the product or services covered by the trademark.</p>
<p><u>GOODWILL:-</u>Â it is an important asset of a company, and
therefore species of property that law protects. In order to get
protection of a mark on the ground of trans border reputation, goodwill
must be proved. It is impossible to have goodwill without the reputation
but converse is not possible. Reputation is always associated with a
person or particular product where as goodwill is not based upon such
extraneous factors. Difference between goodwill and reputation was laid
down in <u>Anheuser Busch Inc Vs. Budejovicky Budvar (1984) FSR </u>413
that goodwill cannot exist in vacuum, with mere reputation which may no
doubt and frequently does exist without supporting any local business,
but which does not itself constitute a property which law protects.</p>
<p><u>Indian case study on trans border reputation:- </u>high court of
different jurisdiction has laid down various principle and views on trans
border reputation at different time. In the recent year there is no doubt
of the fact that they have accepted the principle of trans border
reputation.</p>
<p>In case of K<u>amal Trading Co. Vs. Gillette U.K Limited Middle Sex,
England, 1988 PTC </u><u>1 </u>The Bombay high court held that "the
goodwill is not limited to the "the goodwill is not limited to a
particular country because in the present days, the trade is spread all
over the world and the goods are transported from one country to another
very rapidly and on extensive scale. The goodwill acquired by the
manufacturer is not necessarily limited to the country where the goods
are freely available because the goods though not available are widely
advertised in newspapers periodical, magazines and in other Medias. The
result is that though the goods are not available in the country, the
goods and the mark under which they are sold acquires wide reputation.
Take for example, the televisions, and Video Cassette recorders
manufactured by National, Sony or other well Japanese concerns. These
televisions and V.C.R's are not imported in India and sold in open market
because of trade restrictions, but is it possible even to suggest that
the word "National" or "Sony" has not acquired reputation in this
country? In our judgement, the good will or reputation of goods or marks
does not depend on its availability in a particular country. It is
possible that the manufacturer may suspend their business activities in a
country for short duration but that fact would not destroy the reputation
or goodwill acquired by the manufacturer."</p>
<p>The same proposition was laid down by Delhi high court in <u>Apple
Computer Inc. Vs, Apple Leasing &amp; Industries, 1993 IPLR 63 DEL</u>,
that it is not necessary in the context of the present day circumstances
the free exchange of information and advertising through newspapers,
magazines, video television, movies, freedom of travel between various
parts of the world, to insist that a particular plaintiff must carry on
business in a jurisdiction before improper use of its name or mark can be
restrained by the court.</p>
<p>But the Calcutta high court gave different explanation in <u>Kabushiki
Kaisha Tosshiba Vs. Toshiba Appliances Co., 1994 PTC 53</u>, That use of
the mark in concerned country is more significant than the trans -border
reputation. It observed that if there are no goods at all in physical
existence, there could be no use of the mark in relation to those. It is
the same, if the goods are in the physical existence somewhere else than
in Indian market. For, however big the foreign market of a trader might
be, and however famous his trade mark might be all over the world, yet to
qualify for use of the mark in relation to the goods within Trade &amp;
Merchandise Marks Act of 1958, such use must be made in India and not
abroad. Further it held that a mere use of the mark in advertising on
other publication media is insufficient as ‘use' because if it were not
so, trafficking in trademarks could be legally indulged in, for a mark
could be registered and then kept alive merely by advertisement without
ever putting any goods into the market. But the Division Bench of the
same court <u>in M/s J.N. Nicholas (Vimto) Limited v. Rose and
Thistle,1994 PTC 83</u>, opined that the use of a trade mark does not
necessarily imply actual sale of the goods bearing such mark. Use can be
in any form. Mere advertisement without having even the physical
existence if the goods in the market can be said to be a use of the
mark.</p>
<p>The concept of trans border reputation is better explained for the
first time in <u>whirlpool case </u>Â in this case plaintiff mark
"WHIRLPOOL" has registered in India in 1977. However the mark had not
been renewed. The plaintiff's mark had a worldwide reputation and
defendant was using the same mark in respect of washing machines. The
plaintiff's had sold machines in a limited no. of US Embassy in India.
The plaintiff company initiated the suit of passing off against the
defendants. Injunction was granted by Delhi high court which was
reaffirmed by Supreme Court. The Delhi high court held that"<em>a product
and its trade name transcends the physical boundaries of a geographical
region and acquires a Trans -border or overseas or extra-territorial
reputation not only through import of goods but also by its
advertisement. The knowledge and awareness of the goods of a foreign
trader and its trade mark can be available at a place where goods are not
being marketed and consequently not being used."</em><em>Â </em></p>
<p>It was further held that in today's world it cannot be said a product
and the trade mark under which it is sold abroad, does not have a
reputation or goodwill in countries where it is not available. The
knowledge and awareness of it and its critical evaluation and appraisal
travels beyond the confines of the geographical area in which it is old.
Dissemination of knowledge of a trademark in respect of a product through
advertisement in media amounts to use if the trademark whether or not the
advertisement is coupled with the actual existence of the product in the
market.</p>
<p>The supreme court of India finally settled this issue in Milmet Oftho
Industries &amp;Ors. Vs. Allergen Inc., (2004) 12 SCC 624. In the present
case Indian pharmaceutical company manufacturing ‘Ocuflox' while the
respondent, apparently a foreign company, was also manufacturing
‘Ocuflox', both being a medicinal preparation relating to the eyes.
According to the respondent, it first used the mark in September 1992
after which it had marketed the product in several countries across the
world but had still not entered the Indian market. The appellant was
granted registration by the Food and Drug Control Administration in
August 1993 and had also applied for registration of the mark ‘Ocuflox'
in September 1993 that is almost a year after the respondent. The
respondent filed a suit for injunction for passing off against the
appellant. The court held that:<em>Â "the mere fact that the respondents
have not been using the mark in India would be irrelevant if they were
first in the world market.</em></p>
<p><u>Conclusion</u><u>:- </u>Â today there are millions of companies are
manufacturing and selling their product worldwide under distinguish name
and mark and, a mark is one which distinguish their goods and services
from others. Without associating a mark with goods and services consumer
will confuse in determining or identifying the source of product. The
rapid growth in international trade makes it possible that countries have
framed IP Laws and recognized the IP rights of proprietor. The concept of
tans-border reputation is also recognized by Indian courts, and rightly,
effectively laid down certain new guideline over this issue; even the
mark has no presence in Indian soil. However it is on right holder to
prove the goodwill and reputation of their marks in India.</p>
<p><u>TRANS BORDER REPUTATION OF A MARK AND INDIAN CASE LAWS ON THIS
CONCEPT.</u></p>
<p><u>Introduction:-</u></p>
<p>A trademark distinguish the goods and services of one person from the
good and services of other person, it is useful to indicate  the source
of origin of a particular goods and services. For example the trademark
"RELIANCE" distinguish the goods of RELIANCE from those of say, "TATA",
trademarks are associated with brand identity, the purpose of which is to
make a correlation between the particular products  and in the minds of
consumer's.</p>
<p>The concept of Trans -border reputation becomes the most debatable
issue at international level with the expansion of trade and business of
the companies. Goods and services are not limited only to the country of
origin but crossed the territory of the state. In the era of
globalization the goodwill and reputation of a mark become significant.
The doctrine of Trans -border reputation lies at the root of well-known
trademarks and the legal protection of which is firmly entrenched in
trademark jurisprudence. Few year ago the theories relating to
acquisition of a trade mark was entirely different from now that, the
trademark must be used in respect of the goods in the concerned country
and many suits of the aggrieved person was refused on the above mention
ground.</p>
<p>Now the scenario is completely changed, with the opening of economy
and expansion of concept of globalization the law of different
jurisdiction has started to recognized action by foreign plaintiff on the
basis of reputation of his goods or services on the foreign soil and have
departed from the old theory of use of the mark in concerned country for
the success in Passing-off action. In order to get the protection of
trademark in countries other than the origin, mark must have a reputation
and goodwill.</p>
<p>In order to protect a mark it is not obligatory on the part of
plaintiff that the mark shall be registered. Today the goods and services
of a company's spread all over the world, they have build their goodwill
and reputation in the market of different geography through their
extensive use and  by expending lot of money on the promotion of their
respective goods and services. Though a product is not available in a
particular territory but through electronic media or other resources the
people can identify the source of origin of the goods.</p>
<p>After taking into consideration of the above facts the concept of
Trans -border reputation evolved. Trans-border reputation is contained
under section 35 of Indian Trademark Act, 1999 and its offers protection
to foreign trade marks on the basis of their international reputation,
thereby complying the requirement of article 16 of TRIPs, which seeks
better protection and treatment of trademarks.</p>
<p><u>Reputation: -</u></p>
<p>It is a most unclear term in the field of Intellectual Property Law.
In absence of statutory definition, acquisition of reputation depends
upon the usage of a particular goods and services in connection with
business. The precise extent use required depends upon the nature of
mark, name or indicia used and of the business or goods concerned.
However, it is very difficult for the plaintiff to prove the reputation
of a mark in different origin as every country has their own criteria to
determine the reputation of marks.</p>
<p>The question of reputation was raised in case of L<u>eahy vs. glover
(1893)10 RPC 141 </u>wherein it was held that in order to succeed the
ground of passing-off the first essential for the plaintiff is to prove
the existence of a business in which there is a goodwill and parts of its
reside in exclusive association of the name, mark or other indicia relied
on with the business. The same proposition was applied after 70 year
in<u> Star Industrial Co. Ltd. Vs. Yap Kwee Kor (1976) FSR
256.</u>Wherein Reputation was defined as essential specie of a personal
property and transferable with the business. Reputation is essential to
claim for passing-off action. The important thing is that
misrepresentation is based on reputation of plaintiff's mark in the mind
of public. The second is that plaintiff's reputation can suffer if the
goods passed off by the defendant are inferior. The third is existence of
goodwill.</p>
<p>The concept of reputation is new to the Indian trademark law. In case
of <u>General Motors Corporation Vs. Yplon</u> , Where the court gave its
own explanation on reputation that reputation involved some kind of
knowledge, where in was known by a significant part of the public
concerned by the product or services covered by the trademark.</p>
<p><u>GOODWILL:-</u>Â it is an important asset of a company, and
therefore species of property that law protects. In order to get
protection of a mark on the ground of trans border reputation, goodwill
must be proved. It is impossible to have goodwill without the reputation
but converse is not possible. Reputation is always associated with a
person or particular product where as goodwill is not based upon such
extraneous factors. Difference between goodwill and reputation was laid
down in <u>Anheuser Busch Inc Vs. Budejovicky Budvar (1984) FSR </u>413
that goodwill cannot exist in vacuum, with mere reputation which may no
doubt and frequently does exist without supporting any local business,
but which does not itself constitute a property which law protects.</p>
<p><u>Indian case study on trans border reputation:- </u>high court of
different jurisdiction has laid down various principle and views on trans
border reputation at different time. In the recent year there is no doubt
of the fact that they have accepted the principle of trans border
reputation.</p>
<p>In case of K<u>amal Trading Co. Vs. Gillette U.K Limited Middle Sex,
England, 1988 PTC </u><u>1 </u>The Bombay high court held that "the
goodwill is not limited to the "the goodwill is not limited to a
particular country because in the present days, the trade is spread all
over the world and the goods are transported from one country to another
very rapidly and on extensive scale. The goodwill acquired by the
manufacturer is not necessarily limited to the country where the goods
are freely available because the goods though not available are widely
advertised in newspapers periodical, magazines and in other Medias. The
result is that though the goods are not available in the country, the
goods and the mark under which they are sold acquires wide reputation.
Take for example, the televisions, and Video Cassette recorders
manufactured by National, Sony or other well Japanese concerns. These
televisions and V.C.R's are not imported in India and sold in open market
because of trade restrictions, but is it possible even to suggest that
the word "National" or "Sony" has not acquired reputation in this
country? In our judgement, the good will or reputation of goods or marks
does not depend on its availability in a particular country. It is
possible that the manufacturer may suspend their business activities in a
country for short duration but that fact would not destroy the reputation
or goodwill acquired by the manufacturer."</p>
<p>The same proposition was laid down by Delhi high court in <u>Apple
Computer Inc. Vs, Apple Leasing &amp; Industries, 1993 IPLR 63 DEL</u>,
that it is not necessary in the context of the present day circumstances
the free exchange of information and advertising through newspapers,
magazines, video television, movies, freedom of travel between various
parts of the world, to insist that a particular plaintiff must carry on
business in a jurisdiction before improper use of its name or mark can be
restrained by the court.</p>
<p>But the Calcutta high court gave different explanation in <u>Kabushiki
Kaisha Tosshiba Vs. Toshiba Appliances Co., 1994 PTC 53</u>, That use of
the mark in concerned country is more significant than the trans -border
reputation. It observed that if there are no goods at all in physical
existence, there could be no use of the mark in relation to those. It is
the same, if the goods are in the physical existence somewhere else than
in Indian market. For, however big the foreign market of a trader might
be, and however famous his trade mark might be all over the world, yet to
qualify for use of the mark in relation to the goods within Trade &amp;
Merchandise Marks Act of 1958, such use must be made in India and not
abroad. Further it held that a mere use of the mark in advertising on
other publication media is insufficient as ‘use' because if it were not
so, trafficking in trademarks could be legally indulged in, for a mark
could be registered and then kept alive merely by advertisement without
ever putting any goods into the market. But the Division Bench of the
same court <u>in M/s J.N. Nicholas (Vimto) Limited v. Rose and
Thistle,1994 PTC 83</u>, opined that the use of a trade mark does not
necessarily imply actual sale of the goods bearing such mark. Use can be
in any form. Mere advertisement without having even the physical
existence if the goods in the market can be said to be a use of the
mark.</p>
<p>The concept of trans border reputation is better explained for the
first time in <u>whirlpool case </u>Â in this case plaintiff mark
"WHIRLPOOL" has registered in India in 1977. However the mark had not
been renewed. The plaintiff's mark had a worldwide reputation and
defendant was using the same mark in respect of washing machines. The
plaintiff's had sold machines in a limited no. of US Embassy in India.
The plaintiff company initiated the suit of passing off against the
defendants. Injunction was granted by Delhi high court which was
reaffirmed by Supreme Court. The Delhi high court held that"<em>a product
and its trade name transcends the physical boundaries of a geographical
region and acquires a Trans -border or overseas or extra-territorial
reputation not only through import of goods but also by its
advertisement. The knowledge and awareness of the goods of a foreign
trader and its trade mark can be available at a place where goods are not
being marketed and consequently not being used."</em><em>Â </em></p>
<p>It was further held that in today's world it cannot be said a product
and the trade mark under which it is sold abroad, does not have a
reputation or goodwill in countries where it is not available. The
knowledge and awareness of it and its critical evaluation and appraisal
travels beyond the confines of the geographical area in which it is old.
Dissemination of knowledge of a trademark in respect of a product through
advertisement in media amounts to use if the trademark whether or not the
advertisement is coupled with the actual existence of the product in the
market.</p>
<p>The supreme court of India finally settled this issue in Milmet Oftho
Industries &amp;Ors. Vs. Allergen Inc., (2004) 12 SCC 624. In the present
case Indian pharmaceutical company manufacturing ‘Ocuflox' while the
respondent, apparently a foreign company, was also manufacturing
‘Ocuflox', both being a medicinal preparation relating to the eyes.
According to the respondent, it first used the mark in September 1992
after which it had marketed the product in several countries across the
world but had still not entered the Indian market. The appellant was
granted registration by the Food and Drug Control Administration in
August 1993 and had also applied for registration of the mark ‘Ocuflox'
in September 1993 that is almost a year after the respondent. The
respondent filed a suit for injunction for passing off against the
appellant. The court held that:<em>Â "the mere fact that the respondents
have not been using the mark in India would be irrelevant if they were
first in the world market.</em></p>
<p><u>Conclusion</u><u>:- </u>Â today there are millions of companies are
manufacturing and selling their product worldwide under distinguish name
and mark and, a mark is one which distinguish their goods and services
from others. Without associating a mark with goods and services consumer
will confuse in determining or identifying the source of product. The
rapid growth in international trade makes it possible that countries have
framed IP Laws and recognized the IP rights of proprietor. The concept of
tans-border reputation is also recognized by Indian courts, and rightly,
effectively laid down certain new guideline over this issue; even the
mark has no presence in Indian soil. However it is on right holder to
prove the goodwill and reputation of their marks in India.</p>       <!-
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