The Madras High Court clarified that the protection granted to well-known trademarks, particularly 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 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. The Respondent argued that they had been using the name PARAGON ENGINEERS with a bird device in Class 7 (electric motors) since 1986 and applied for the PARAGON mark to expand their business activity to an allied business in Class 9.

The Court held that a well-known trademark grants the proprietor wider protection, even against use 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 [Delhi High Court-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]