What are ‘well-known’ trademarks?
Under Indian trade mark law, the term “well-known trademark” refers to a mark which has become so well-known to a substantial segment of the public through its extensive and continuous use such that its use in relation to any other goods or services by another party may be taken as indicating a connection between the two parties. Individuals or companies that have acquired immense brand value, reputation, and goodwill in India through their trademarks should apply to have the trademarks included in the list of well-known trademarks to safeguard themselves from future infringements and dilutions.
Indian trade mark law provides extraordinary protection to well-known trademarks, and their goodwill and reputation extends across the nation and across all classes of goods and services. Consequently, if an attempt is made to register a trade mark that is deceptively similar to a prior well-known mark even for different classes of goods and services, the subsequent mark would be rejected. The Intellectual Property Office (IPO) recognizes well-known trademarks in India on the basis of their international, national and cross border reputation.
Duties of the Applicant
Before the Trade Mark Rules, 2017 (the Rules), came into force, well-known trademarks in India were determined by Indian courts and tribunals in individual cases. On the basis of such decisions, a list of declared well-known trademarks was maintained by the Trade Marks Registry.
The Rules made it simpler for trademark holders to apply for well-known status under law. As per the Rule 124, a proprietor can file a request before the Registrar for determination of their trade mark as a well-known trade mark. This application must be accompanied by Form TM-M and fees as per the First Schedule, which currently stands at INR 1,00,000 (approximately USD 1300). Such requests can only be e-filed. The applicant must also file a Statement of Case with evidence and documents to support its claim. Evidence can include:
- evidence as to use of trademark,
- trade mark registrations applied for or obtained,
- annual sales turnover of the business covered by the mark,
- number of actual or potential customers,
- publicity and advertisement of the trade mark along with expenses incurred,
- evidence as to knowledge or recognition of the trade mark with the relevant section of the public in India.
Duties of the Registrar of Trademarks
The Registrar of Trade Marks is obliged to assess certain parameters when examining an application in this category. The duties of the Registrar with respect to protection of well-known trademarks in India are contained in Sections 11(6) to 11(11) of the Indian Trade Marks Act, 1999 (the Act). The factors relevant for determining a well-known trade mark include the following:
- 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 a trademark;
- The business circle dealing with those goods or services.
- The record of successful enforcement of the rights in that trade mark in particular, the extent to which the trade mark has been recognized as a well-known mark by any court or Registrar.
Where a trade mark is determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under the Act.
The Act also lists certain factors that must not to be taken into consideration by the Registrar for determining a well-known trade mark, including:
- Whether the trade mark has been used in India;
- Whether the trade mark has been registered;
- Whether the application for registration of the trade mark has been filed in India;
- Whether the trademark, is well-known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India;
- Whether the trade mark is well-known to the public at large in India.
Once a request for determination of a well-known trade mark has been filed, the Registrar may invite objections from the general public, before making a final decision. The time period for receiving such objections is 30 days. Any person who wishes to object may file their objection in writing to the Registrar stating their reasons with supporting documents.
Under law, the Registrar, when considering an application for registration of a trade mark and related oppositions, must protect a well-known trade mark against identical or similar trade marks, and must take into consideration the bad faith involved either of the applicant or the opponent affecting rights relating to the trade mark.
Once determined as well-known by the Registrar, the trademark will be notified in the Trade Marks Journal. If, however, the Registrar finds that a mark has been erroneously or inadvertently included in the list, the trademark may be removed from the list of well-known marks after giving an opportunity of hearing to the concerned party.