Navigating The Complexities Of Well Known Trademark Rights; Insights From Vans vs FCB Case

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The Delhi High Court earlier last month, ruled in favour of FCB Garment Tex, restricting Vans Inc. from rectifying FCB’s trademark. Vans Inc. had sought this rectification following their mark being recognized as well-known, but the Delhi High Court observed that such recognition does not grant an automatic right to a proprietor to file for rectification of marks with prior usage subsisting in the Trade Marks Registry.

This article analyses various aspects of the aforementioned Delhi High Court decision and the key elements evaluated by the Court to determine whether a well-known trademark can provide unabridged right to a proprietor to file for rectification of trademarks with prior usage.

Background

The case between M/s. Vans Inc USA (Vans), a well-known American brand and FCB Garment Tex India (P) Ltd. (FCB) revolves around trademark disputes concerning FCB’s marks ‘IVANS’ and ‘IV ANS NXT’ (FCB Marks). Vans, primarily engaged in manufacturing and trading footwear, apparel, and related products.

Vans holds several trademark registrations for its “VANS” trademark. Vans had registered the ‘VANS’ trademark in India in 2006 after proposing its use in 1992 and formally entering the Indian market in 2011. The mark gained well-known status in February 2024, due to significant recognition among skateboarders. In contrast, FCB applied for the FCB Mark in 2002, claiming use since 1999, and it was registered without opposition in 2007. Whereas the FCB is an area local shoe brand has been using its marks under Class 25, which covers apparel and clothing, with usage dating back to April 1999 and April 2000.

Vans argued that usage of the FCB Marks infringed on its earlier trademark rights, asserting that the similarity in the marks’ phonetics, appearance, and the identical goods they represent are likely to confuse the public and create an association with the “VANS” brand, as ‘VANS’ has been declared as a well-known trademark on 19th February 2024.

Brief Facts & Arguments

The admitted position in the matter is that Vans entered the Indian market in 2011, on the other hand, FCB has been using its marks since 1999. Vans’ application in 1992 was on a ‘proposed to be used’ basis and the registration was granted in the year 2006 and published only on 15th April, 2005. In contrast to FCB Marks which was applied in 2002 with user claim from 1999 and published in the trademark journal in 2006. Further, FCB Marks were given no opposition registration in the year 2007.
Vans launched their products in Indian market 19 years later they had filed trademark application. Therefore, the question of constructive notice when FCB applied for FCB Marks in 2002 does not arise.

Vans stressed in their arguments that the adoption of the FCB Marks was in bad faith and with dishonest motives, having deliberate intention to take advantage of Vans’ well-established reputation. Vans’ trademark has been totally subsumed into FCB’s Marks and thus, ought to be rectified from the Trade Marks Registry.
Vans also argued that the search conducted by the Registrar was faulty mark not cited in examination report which is in violation of Rule 33 of the Trade Mark Rules, 2017.

On the other hand, FCB contended that both the marks were not similar by showing distinction in their logos, packaging, basis of origin and language, pronunciation, pricing and the kind of product sold under the FCB Marks. FCB also contended that they are the prior users of the FCB Marks dating back to the year 1999.

Judgment & Conclusion

The court dismissed the petitions filed by Vans. In conclusion, the court favoured FCB, dismissing the petitions on the grounds of prior usage, honest concurrent use, and lack of likelihood of confusion among consumers. Trademark registrations of FCB Marks remained intact, and claims were not substantiated.

The essence of the court’s analysis focused on the concept of well-known trademarks and the protection they receive under Indian law. The court, keeping in mind Vans’ global reputation reiterated the importance of considering prior use by local businesses. Even while evaluating the likelihood of confusion and dilution, the court took a comprehensive approach, considering the similarity of the marks, the nature of the goods, consumer perception, and the extent of use. While acknowledging the visual and conceptual similarities between the marks, the court emphasized balancing the interests of both parties to prevent undue prejudice to the FCB’s prior rights.

The honourable court clarified that the owner of a well-known trademark does not have an unabridged, absolute right to apply for rectification/cancellation of all allegedly similar marks already on the Register with prior usage. Further, the delay of 16 years by Vans in filing the rectification application and unopposed enjoyment of the FCB’s Mark for 20 years thereby leading to acquiescence.

Therefore, the declaration of “VANS” as a well-known trademark is not relevant for the purposes of rectification since FCB cannot lose rights of its own mark which is not liable to be removed from the Trade Mark Registry.

Future Implications

The Delhi High Court’s decision in the Vans v. FCB case sets a precedent for evaluating the rights of well-known trademarks, stressing a thorough analysis beyond superficial similarities. This judgment provides a protective stance for prior users while urging well-known trademark owners to approach rectification with strategic evidence and consideration. Despite the robust legal framework, challenges in enforcement remain, in future well-known trademarks shall go through intense scrutiny when rectification is sought. Such cases shall be examined beyond its transborder reputation and the dynamic nature of consumer perception. Pursuant to the court’s decision, such well-known marks prior usage in the relevant market shall be examined minutely.

Authors: Ananya Chakraborty & Shalini Bajpai


Lawyers.

Interns and Paralegals.

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