Protection of well-known trade marks in India

TrainShoes, an Austrian SME manufacturing shoes, was using a particular trade mark in respect of its products and services, registered in several countries in which it was selling its products. Through the quality of the shoes and efficient marketing, the company managed to rapidly develop a global reputation. Considering that India is a large market with great potential for the commercialisation of sneakers, the TrainShoes was interested in expanding its business to India. However, the EU SME chose not to register its trade marks in India and to rely on its international reputation instead, should someone try to copy their brand. This came into a wider strategy applied by the company to cut some costs, including those associated with the maintaining of its trade mark portfolio, which were considered too high. At the same time, the SME began to invest heavily in several TV advertisement campaigns, social media platforms and internet to build its brand in India. Consequently, the TrainShoes brand gained significant reputation associated with its products. After a few months of presence in the Indian market, TrainShoes was made aware by an authorised dealer that an Indian company was manufacturing shoes and clothes under the same brand. The EU company conducted a background check of the Indian company and found out that not only had the infringer started to commercialise products under its brand, but it had also registered it as a trade mark at the Trade Mark Registry. The EU company had not monitored the Journal of the Indian Trade Mark Registry and therefore had not noticed that the third party had succeeded in registering a mark identical to its own and hence had not filed an opposition to its registration. To resolve this situation, the EU company reached out to an IP expert to formulate the best strategy to deal with this situation in context of the Indian market.