What is a Well-Known Trademark?
The term ‘well-known trademark’ refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.Individuals/ Companies that have acquired immense brand value, reputation and goodwill in India through their trademarks should get the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions.
What is the criteria for determining a Well-Known Trademark?
The Registrar shall, while determining whether a trademark is a well-known trade mark, takes into account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:
- That the trade mark is well known to the public at large in India;
- The number of persons involved in the channels of distribution of the goods or services;
- The number of actual or potential consumers of the goods or services;
- The duration, extent and geographical area of any use of such trade mark;
- The business circle dealing with those goods or services.
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 mark by any court or Registrar under that record.
The branding of a new drug by pharmaceutical companies is a crucial decision for the success of that drug in the market. However, the present regulatory regime in India does not provide any rules or guidelines for selecting a brand/ trade name for a pharmaceutical drug in India. Often, the absence of such guidelines leads to fly-by-night operators or smaller traders attempting to brand their products as closely as possible to the trademark of a reputed drug, even if they do not share characteristics or have the same active ingredient(s). This creates confusion amongst health professionals and pharmacists alike, which further has the potential to endanger the lives of patients and consumers.
The Madras High Court earlier this year rejected a writ petition filed against a patent owned by Kibow Biotech Inc. for a dietary supplement that aids in the carrying out of the kidney function, for reasons, among others, that there was no expert evidence led to support the case. The validity of the patent was challenged primarily under Section 3(e) of the Patents Act, i.e., on grounds that it was “a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance”.
The government of India is reportedly considering a proposal to once again introduce limits on the amount of royalty payable by Indian subsidiaries to their foreign parent firms for the use of trademarks and brand names, or for technical services. These limits were last applied in India nearly a decade ago.
Intellectual property lawsuits are often about obtaining interim relief in the form of injunctions against parties, sometimes without the court giving them an opportunity to be heard. Usually, the court considers factors of whether a prima facie case has been established, if balance of convenience lies in favour of the complaining party, and whether irreparable loss is likely to be caused if such relief is not granted.
On 21st February, 2019, the Ministry of Corporate Affairs (MCA) notified the Companies (Incorporation) Amendment Rules, 2019 ("Amendment Rules") directing every company incorporated on or before 31st December, 2017 to file E-form INC – 22 A to verify their registered office. This move of the government along with other newly introduced stringent compliances such as director KYCs, is with the aim to tighten the noose around dummy entities.
Can an artwork that is under copyright be relied upon for obtaining trademark registration? The Delhi High Court recently disagreed, holding that copyright registration was “extraneous” to trademark registration, overturning a decision of the Intellectual Property Appellate Board (IPAB) in this regard.
In order to catalyse entrepreneurship and let the start-up segment flourish, the Indian government has issued a notification dated February 19, 2019 ("Notification"), which sets out certain tax exemptions available to start-ups under the Income-tax Act, 1961 ("Act").
The Companies (Amendment) Ordinance 2018 ("2018 Ordinance"), issued on November 2, 2018 brought about significant changes to certain provisions of the Companies Act, 2013 ("Act"). The 2018 Ordinance was passed by the Lok Sabha, though could not be taken up by the Rajya Sabha and which was due to expire on January 21, 2019. In order to give continuity to the amendments introduced by the 2018 Ordinance, it was re-promulgated on January 12, 2019 by another ordinance i.e. the Companies Amendment Ordinance 2019 ("Ordinance") on January 12, 2019 with its provisions effective from November 2, 2018.
On 13th June 2018, the Ministry of Corporate Affairs notified Section 90 of the Companies Act, 2013 ("Act") and the Companies (Significant Beneficial Owners) Rules, 2018 ("SBO Rules"). Both aim to make transparent a company’s ownership by tracing the identity of the individuals who ultimately control the company.
The procedures for the fixation of trait value or seed price of registered plant varieties must only be done as per the plant variety protection law, and based on the agreement between the right holder and the concerned party, according to a new Notice issued by the plant variety regulator. The Notice is unique because this is the first time that an IP regulator has formally issued a legal instrument stating that any price control of protected items must be in accordance with the relevant IP legislation.