Well Known Trademark: As per the definition mentioned in The Trade Marks Act, 1999 it is “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
As of now, the list includes 81 marks listed as well-known on the IP India website. Earlier the scenario was that the proprietor of a famous trademark could only establish his mark as well known by judicial proceedings before a court. But after the recent change in the Trade Mark Rules, 2017, ‘Ease of doing business in India’ and ‘Startup India’ initiative has been promoted. As a result, now a proprietor of a famous mark can directly apply online to the Registrar of Trademarks for the inclusion of his mark into the list of well-known trademarks.
The new rules also mention about the conditions and the requirements which need to follow by the owners of the marks to declare their marks as well-known.
Rule 124 of the Trademark Rules 2017 mentions that any person may file an application in Form TM-M along with the prescribed fee to designate its mark as a well-known trademark. The applicant will have to support its claim with a statement to that effect and supporting documents.
Registrar shall also take into consideration the provisions of Section 11(6) to 11(9) of the Act, when such an application is submitted to him. It essentially provides that while determining a mark as a well-known trademark, the Trade Marks Registrar has to take into account any fact which he considers relevant for determining a trademark as a well-known trademark, these are:
a. the knowledge or recognition of the trade mark in the relevant section of the public, including knowledge in India of the mark;
b. the duration, extent and geographical area of any use of such trade mark;
c. the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies
d. the duration and geographical area of any registration of or any application for registration of that trademark under the Act to the extent they reflect the use or recognition of the trademark;
e. The record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.
Registrar is at liberty to invite objections from the public, before declaring the said mark as a well-known trademark. If there are no such objections, then the mark shall be advertised in the Trademark Journal and become part of the well-known trademark list. The fee for making such an application is INR 100,000 and such application has to be filed online.
Section 11(9) specifically lays down that it is not mandatory for a mark to be registered or application pending in India or have usage in India to be declared well-known trademark. Similarly, as per the same clause, it is not even mandatory that a mark to be considered a well-known trademark has to be popular and well-recognized by the public at large in India.
Brief Summary of the process:
i. Form TM-M: it is necessary to provide an application number for the subject trademark to be declared well-known, even though there are radio buttons to mention if your mark is registered with the Trademark Registry or not, which, in such a case, would imply that the provisions laid down in Section 11(9) might basically be redundant and it would not be possible to get your mark a well-known trademark status unless an application is filed in India.
ii. Fee of INR 100,000
iii. An application should be accompanied with the evidence towards the use of the Trademark over a long period of time.
iv. Other documents supporting its claims that the mark has a unique reputation in the minds of the consumers. It should be presented at the time of application filing.
v. The Registrar, after receiving the application, can give relative grounds of refusal of registration and/or he may also call for further documents/evidence to reach a conclusion whether the mark is a well-known trademark.
vi. The Registrar before declaring a mark as a well-known trademark would invite objections from the general public. Publication in Journal – Once the trademark is declared a well-known trademark; it would be published in the journal.
vii. A well-known mark shall be also included in the list of well-known trademarks maintained by the Registrar.
viii. The mark, if found to be erroneously included in the list and not justified, may even be removed after providing an opportunity to the party for a personal hearing adhering to the principles of natural justice.
It is highly prudent that a trademark having brand value, reputation and goodwill in India should get itself included in the list of well-known trademarks to safeguard itself from future probable infringements and claim benefits as provided to other well –known trademarks. Further, you may also interested to read the following posts:
What is Trademark and Types of Trademarks
Salient Features of Trademark Rules 2017
Registering Sound Marks in India- Trade Mark Rules 2017
Smell Marks: The New Rage in Trademarks
Collective Trademarks in India
Series of Trademarks in India