How to obtain the status of Well-Known Trademark in India?

GENERAL UNDERSTANDING

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Well-known trademarks are outcome of substantial and widely used mark. The usage, recognition, goodwill and reputation including others factors are the governing criteria for a mark to acquire the status of well-known trademark. A well-known trademark enjoys a special. A mark becomes well-known trademark depending on:

1. long standing and continuous usage of the mark;
2. extent and geographical area of the usage of the mark;
3. grade of recognition, a mark has acquired;
4. extent of goodwill and reputation associated with the mark;
5. existence of the mark among the substantial segment of the public;
6. value associated with the mark; and
7. other related factors and circumstances.

Earlier well-known trademarks were protected under the common law. And the concept of well-known trademark was operational on judicial pronouncements and precedents. Thereafter, Trade Marks Act, 1999, statutorily recognized and defined a well-known trademark u/s. 2(1)(zg). Further, rule 124 of the Trade Marks Rules 2017 empowers the Registrar to determine a mark as well-known trademark after following a due procedure.

As per the data available at www.ipindia.nic ,, there are only 97 (Ninety Seven) trademark, which are designated as well-known trademark. Most of the trademark like “Google” relating to search engine and other online services, “Mother Dairy” relating to Milk and Milk related products, “Oral-B” relating to oral care products, “Garnier” relating to toiletry and cosmetic products, “Zee” relating to the services of Media and entertainment etc. are familiar to us.

STATUTORY DEFINITION

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As per section 2(1)(zg) of the Act a well-known trademark is “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 per the above definition of well-known trademark works on the criteria, as mentioned below:

1. A mark (Mark “A”) which has become well-known among the substantial segment of the public which uses such goods or services (electronic goods); and

2. if the said mark “A” is used in relation to the other goods or services (IT goods) by any other person, then it is likely to be taken as indicating a connection between the other goods or services (IT goods) and the first mentioned goods or services (electronic goods), for such person who are familiar of using such goods or services (electronic goods) under mark “A”.

From the above said definition it is clear that it is used in relating to specific goods or services and the substantial segment of public uses the said goods or services. If any person start using the said mark in relation to the other goods or services, then in such situation there are chances of likely hood of indication of a connection between the other goods or services and the first mentioned goods or services.

It is also important to note here that the other goods or services may or may not be similar or identical to the first mentioned goods or services. This allows a wider protection to the owner of a well-known trademark, by restricting others person to use a well-known trademark for dissimilar goods or services also.

PROCEDURE FOR DETERMINATION OF

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Rule 124 of the Trade Marks Rules, 2017 lays down the criteria to determine a mark as well-known trademark by Registrar of trademarks. The complete procedure as per rule 124 of TM Rules, 2017:

1. Any Person may make an application in Form TM-M alongwith prescribed Fees of Rs. 1,00,000/- (Rupees One Lakh) for determination of a mark as well-known trademark;

2. The Application in Form TM-M is to be accompanied by statement of the case alongwith all the evidence and documents relied by the Applicant in support of his claim;

3. The Registrar while determining a mark as well-known trademark shall take into account the provisions of section 11(6) to 11(9) of the Trade Marks Act, 1999;

4. Before determining a mark as well-known trademark, the Registrar may invite the objection from the general public to be filed within a period of 30 (thirty) days from the date of such invitation of objections;

5. In case a mark is determined as well-known trademark, then the Registrar shall publish such details in the trademark Journal and include the said trademark in the list of well-known trademarks;

6. The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademark, remove the same from the list after providing due opportunity of hearing to the concerned party.

In order to streamline the procedure for making an application for well-known trademark before the Registrar of trademarks, a public notice bearing No. CG Office/TMR/Well-Known TM/335 dated 22nd May, 2017 was published by Controller General, Patent, Design and Trade Marks.

BENEFITS OF OBTAINING THE STATUS OF WELL-KNOWN TRADEMARK

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Benefits of obtaining the status of well-known trademark are as follows:

1. A well-known trademark is associated and used by its owner;

2. Exclusive right of ownership against all unlawful users;

3. Protection against false and frivolous litigation;

4. Well-known trademarks are better recognized than a registered trademark;

5. Registrar of trademarks are restricted to allow the registration of mark which are similar or identical to a well-known trademark;

6. Well-known trademarks are protected across all classes of goods and services even though the said well-known trademark is not used for all classes of goods and services;

7. At all the legal proceedings an Owner of well-known trademark can always claim and stress on the point that he is the owner of well-known trademark and enjoy a better right than others.

8. Other benefits propounded by Courts in India.