Laws for Registration of Well-known Marks in India

WHAT IS A WELL-KNOWN TRADEMARK?

A well-known trademark is a trademark which is widely known to the prominent section of the public and enjoys a relatively high reputation. If any other party uses that protected well-known mark on their products or services, it would be deemed a sign that the product or service is associated with the later service provider and hence would amount to infringement of trademark rights.

Any trademark which is not recognized as a well-known mark in India by the court or the trademark registrar makes it mandatory for trademark registry to fortify the well-known mark against any discordant marks, brand or any domain name.

Recognition of marks as well-known marks drift from its primary objective of trademark registration; as trademark registry is given orders to not register any marks which are virtually identical or similar to the registered well-known trademark.

FOR REGISTRATION OF A WELL-KNOWN TRADEMARK

• Relevant provisions of Trademark Act and Rules, 2017:

• Sections 11 (6)-11 (9), Trademarks Act, 1999: The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including:
• The knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trademark;
• The duration, extent and geographical area of any use of that trademark;
• 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;
• The duration and geographical area of any registration of, or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trademark;
• 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.

Section – 11 (7): The Registrar shall, while determining as to whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6), take into account, the number of actual or potential consumers of the goods or services;

• The number of persons involved in the channels of distribution of the goods or services;
• The business circles dealing with the goods or services, to which that trademark applies.

Section – 11 (8): Where a trademark has been 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 trademark as a well-known trademark for registration under this Act.

Section – 11 (9): The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:—

• that the trademark has been used in India;
• that the trademark has been registered;
• that the application for registration of the trademark has been filed in India;
• that the trademark:
  1. is well known in; or
  2. has been registered in; or
  3. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
• that the trademark is well-known to the public at large in India.
• Rule 124, Trademarks Rules, 2017: Determination of well-known Trademark by Registrar:
• Any person may, on an application in Form TM-M and after payment of fee as mentioned in the First Schedule, request the Registrar for determination of a trademark as well known. Such request shall be accompanied by a Statement of the case along with all the evidence and documents relied on the applicant in support of his claim.
• The Registrar shall while determining the Trademark as well-known take into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999.
• For the purpose of such determination, the Registrar may call such documents as he thinks fit.
• Before determining a trademark as well known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
• In case the trademark is determined as well known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.
• The Registrar may at any time if it is found that the Trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing the due opportunity of hearing to the concerned party.

Required Documents as per the Guidelines issued by TM registry in 2017

• TM-M Form with payment of Rupees 1 Lakh. (ONLY E-filing allowed);
• A statement of the case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark;
• Evidence of the use of the mark and annual sales turnover of the business using the mark;
• Evidence of advertisements and publicity using the mark and related costs;
• Evidence of actual or potential users of the mark;
• Evidence of knowledge or recognition of the mark in India and overseas; and
• Details of successful enforcement of rights with respect to the mark, if any, especially with respect to the mark being well known, including a copy of the judgment of an Indian court or registrar of trademarks determining the mark as being well known.
• The size of the document submitted along with a statement of the case as evidence / supporting document should be in PDF format with a resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.
• Any person who wants to object to the inclusion of the trademark in the list of well-known trademarks may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents if any.
• A copy of the objection may be communicated to the applicant for comments within the stipulated time.
• The office will communicate the decision in respect of the objections to the parties concerned.
• The final decision of the office regarding the inclusion of the trademark in the list of well-known trademarks will be communicated to the applicant.
• In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website. For more visit: https://www.kashishipr.com/