What are Well Known Trademarks in India?

With the upcoming new Trade Mark Rules 2017, a new procedure has been formed that permits the Trademark Registrar to declare a specific trademark known as “Well Known Trademark”. As per the new Trade Mark Rule, the owner of a trademark can file an application in Form TM-M to appeal to the Registrar for announcing to be well known. Well known Trademarks has been offered amazing protections against passing off and violation of such trademark. Well known Trademarks are appreciated in India based on their reputation nationally and globally. Scroll down to check more information regarding the Well Known Trademarks in India.

Meaning of Well Known Trademarks – An Overview

In India, the well known trademark has been given special ownership rights against the registration of falsely similar or identical or copied marks as well as against their misuse. This special protection or safeguard accorded to well known marks a consequence of practices and declarations that have been carefully evolved by the courts in India. Here it would be related to mention that legal protection was permitted to well known marks only in India in 1999. Earlier to that, well known marks were safeguarded under the common law principles of passing off. The official website of the Indian Trademark Registry provides a complete list of well known trademarks in India such as AMUL, GOOGLE, etc. Currently, the list of 81 trademarks has been confirmed as “well-known” by judicial and quasi-judicial authorities in India.

Unlike other trademarks in India whose status and goodwill are limited to a particular geographical area and a specific range of products, well-known marks have their value/status and goodwill protected across the country and categories of products and services. It’s a law that restricts the Trademark Registry to permit and register any mark as a trademark which is misleadingly similar to any of the well known trademark. For example, Google has been registered as a well known trademark of Alphabet Inc., which means only Alphabet Inc. can register the word “Google” for any category of goods and services. Even if the service is not associated with the internet industry, no other company but Alphabet Inc. can register “Google” as its trademark.

Also, Read: Procedure for Trademark Registration in Mumbai – A Complete Guide

What is the Provision related to Well Known Trademarks in India?

Following are some provision regarding well-known marks in India:

Rule 124 of Trade Mark Rules 2017

This rule allows the owner of a trademark to file a request for a grant of a well known trademark to the Trademark Registrar in the Form TM-M. Before the Trade Mark Rule, a mark was declared well-known only after proceedings, opposition, and rectification held before the Hon’ble courts. With the beginning of the Trade Mark Rules and the procedure put thereof, a trademark owner can demand a well known trademark without getting into any rectifications and proceedings. Rule 124 makes sure a trademark is approved by the tag of “well-known” just by a request application to the Registry. 

Trademarks Act, 1999

• 11 (2) Protections of Well-Known marks across all classes: The Provision of this section lengthens the range of protection provided to the well known trademarks. As per this clause, well-known marks are to be protected and recognized across all the clause of goods and services. An appropriate portion of the section has been repeated herein:

1. A Trademark that is similar or duplicate to an already registered trademark.
2. A trademark that is registered for goods or services is not similar or identical to a trademark that is already registered in a different owner’s name shall not be registered, if or to the extent. The previous trademark is a well known trademark in India, and the use of the previous mark without any due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the previous trademark.

• 11 (6) Factors taken into consideration while defining the trademark as well-known: 

A Joint Resolution Concerning Provisions on the safeguarding of well-known marks was adopted by WIPO (World Intellectual Property Organization) in 1999 in order to safeguard the well-known marks from infringement, where various factors in determining a well known trademark were enlisted. India being a member of WTO or the World Trade Organization, embraced these factors and preserved them in clause 6 of Section 111 of the Trademark Act. These factors include:

1. Awareness about the mark in relevant sections of the public;
2. The duration, amount and geographical area in which the trademark is used.
3. The duration, amount and geographical area in which the trademark promoted with respect to the goods and services to which it applies;
4. Trademark Registration to the extent they reflect the use of the trademark;
5. Record of effective implementation of the rights in that trademark containing the record defining that the trademark has been appreciated as well known by the Registrar or by any court.

• 11 (9) – Circumstances not required for well-known Trademark Registration: This section tells certain conditions which are not required for the purpose of granting well-known trademarks. You can check these conditions below:

1. Trademark has been used in India;
2. Trademark has been registered;
3. The Registration application of a trademark has been filed in India;
4. Trademark is well-known or registered in any other authority other than India;
5. Trademark is well-recognized to the public at a huge scale in India.

It can be specified that for a trademark to be granted protection in India, it is not essential that the owner of a mark has his or her business or company in India or its trademark is registered in India, or required trademark is known to a large scale. Thus, the specific Provision provides for the concept of trans-border trademark reputation.

• Responsibility on the Registrar: It is the duty or responsibility of the Registrar that in case of infringement or misuse, the Registrar must safeguard the interest of the well-known trademark against similar ones and also must take into thought and notice the ill intention.

Filing of a Well-Known Trademark Application

With the incorporation of the Trade Mark Rules 2017, the owner of a trademark can apply for a well-known trademark to the Registrar. The supposed application of request should be accompanied by a case statement, documents, evidence, and Rs. 1 lakh fee, which has been already suggested. It is also compulsory that the application for a well-known trademark has to be filed online through the e-filing services of the trademark. Once the application is submitted, the application shall be considered under the documents submitted.

Following are some documents required for filing a well-known trademark application:

• Statement of case declaring the applicant’s or claimant’s right on the trademark and describing the trademark claim to be a well-known trademark.
• Details of effective implementation of rights in case the trademark have been recognized as a well-known mark by the Trademark Registrar or the court in India.
• Submit a copy of a judgment of any court or the Trademark Registrar wherein the trademark has been known as well-known.
• Proofs are showing the right of the claimant and justifying his or her claim. Such proofs or evidence containing documents or data showing:

1. Use of a trademark or any application filed for trademark registration or registration attained.
2. An actual number of customers under the believed trademark.
3. Annual sale turnover of the claimant’s business.
4. Advertisement of the trademark along with the expenses incurred thereof.
5. Recognition of the trademark in the appropriate section of the public across the world.

Note: All the documents mentioned above, along with the evidence, are required to be submitted in a PDF format with a resolution of 200 X 100 dpi on A4 size paper and the size of all the documents not exceeding 10 MB.

Conclusion

Registration of marks as well-known trademarks is usefully for international brands with a global reputation. Moreover, introducing a process to apply for well-known trademarks is an essential step forward in India’s effort to enhance Intellectual Property protection in India. This is likely to increase confidence in India’s IP rule within the international community.

Also, Read: Process of Trademark Search in India – An Overview