HYATT is Recognized as a Well-Known Trademark

The Department of Industry ("DOI") has recognized the mark "HYATT" as a well-known trademark in its decision in the case of Hyatt International Corporation v. Dhanusha Distillery Pvt. Ltd. The decision was pronounced on January 20, 2020.

Dhanusha Distillery Pvt. Ltd. sought registration of a mark "HYATT" in class 33. Hyatt International Corporation ("Hyatt"), an American multinational hospitality company and the registered proprietor of the mark "HYATT" in classes 42 and 43 opposed the application on the ground that "HYATT" is a well-known trademark among the public of Nepal and registration of the proposed mark by Dhanusha Distillery Pvt. Ltd. will lead to confusion among the public. Accepting the claims of Hyatt, DOI held that:

• registration of trademark either identical or deceptively similar to well-known marks in name of another entity may lead to confusion among public.

• such registration may also adversely affect goodwill of the original trademark owner.

DOI, in reaching the above conclusion, cited Article 2 of Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks which lays down factors for determining well-known trademarks. The decision of DOI establishes that well-known trademarks are eligible for protection not only in the class in which it is registered but also in other classes and non-competing goods and services where the well-known marks do not have registration.