Microsoft is a Well-Known mark now; now declared!

Much debate revolves around which should be treated as a well-known mark, and which does not qualify for such “extended” protection. In a case of its own kind, the Delhi High Court has let Microsoft enjoy the celebrated status of being “well-known” amongst the public en masse.

The Plaintiff’s contentions that the company enjoys stellar reputation across the world, and enjoys a market at a global level, boasting of equally great volumes of usage have yielded in punitive damages being awarded in an ex parte case. With heavy investments having flown from the company into advertisements and brand management, the brand name is now exclusively identified and associated with the company.

The court relying on an earlier Supreme Court judgment in N R Dongre v. Whirlpool Corporation has held that Microsoft is a “well-known” trade mark, and that no one else is entitled to use the mark in a similar or dissimilar business as the mark had come to acquire unique goodwill and reputation.

The Court went on to hold that awarding punitive damages, is an appropriate vehicle for deterring infringers from engaging in illegal trade practices in their greed for business. The Court has awarded Rupees Two lakhs in terms of compensatory damages, Rupees Three lakhs in the form of punitive damages and another Fifty Thousand Rupees as costs to the suit.

With this, the brand name Microsoft joins the elite list of “well-known” marks, as maintained by the Registrar of Trade Marks. 

- Bagmisikha Puhan

Gucci Lost Opposition

In a recent turn of events, Gucci an Italian fashion and leather goods brand has opposed a UK trademark application for a device mark claiming it to be similar to their famous GG logo. But the registrar ruled that the said device mark lacks resemblance to the GG logo and the mark does not conflict Section 5(3) (of UK Trademark Act) for protectionof well-known marks. The applicant’s device mark was also applicable to similar goods such as clothing line etc.

 Courtesy: Gucci accessories, lyst.com

Gucci has registered its GG logo via Community Trade Mark registration in EU and UK. In UK it is a registered mark for over 50 years which was described as two G’s facing each other creating a symmetric mirror image. The basis of opposition by Gucci was based on this description. But the registrar disagreed on Gucci’s claim stating that the applicant’s device was more analogous to ‘human torso’. He also argued that the consumers will pay more attention to the device per se and the perception to the similarity of the marks will be little.

Although Gucci provided many evidences to prove its point, registrar stated that the Gucci has failed to prove that Gucci’s device mark has brought a significant distinction to their brand and products upon use. This led to Gucci’s unfortunate loss in the case.

So the question here is how much is too much? What amount of similarity between the device marks makes them similar and deceptive? Although, it is also important to note that Gucci has been changing its GG logo for the purpose of rebranding and advertising, so will a differently arranged  double ‘G’ applied for the similar kind goods create confusion among consumers as a rebranded Gucci’s logo? Perhaps this question can be best answered by the consumers themselves.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney