The Madras High Court clarified that the protection granted to well-known trademarks, particularly in relation to the broad protection across different classes, is prospective in nature and does not apply retrospectively. In the case of Paragon Polymer Products Pvt. Ltd. v. Sumar Chand Nahar and Ors., Paragon Polymer Products Pvt. Ltd. is the registered proprietor of the PARAGON mark in Class 25 for footwear since the year 1975. In 2017, the mark was declared well-known. By virtue of the protection granted to well-known trademarks, Paragon Polymer Products Pvt. Ltd. opposed the Respondent’s application to register the PARAGON mark in Class 9. In support of their application, the Respondent argued that they had been using the name PARAGON ENGINEERS with a bird device in Class 7 since the year 1986 and applied for the PARAGON mark in Class 9 to expand their business activities to an allied business.
A well-known trademark grants a proprietor wider protection, even against use of the mark on goods or services in different classes. However, such protection is only effective from the date the mark is officially recognized as well-known. The Court clarified that this status does not allow the proprietor to take action against honest and concurrent users who adopted the mark earlier in good faith. By relying on Delhi High Court rulings in VANS Inc. USA v. FCB Garment Tex India [C.O. (Comm. IPD-TM) 161/2021 & I.A. 15763/2022] and VANS v. Fateh Chand Bhansali [C.O. (Comm. IPD-TM) 416/2022], the Court held that the recognition of a mark as well-known does not apply retrospectively, and such protection can only be enforced prospectively.
Source: Paragon Polymer Products Pvt. Ltd. v. Sumar Chand Nahar and Ors. [(T)CMA(TM) No. 80 of 2023]