A trademark owner can submit an application in form TM-M to the Registrar, requesting that the mark be declared “well-known.” A well-known trademark has been granted exceptional protection and safeguards against trademark infringement and passing off. In India, well-known trademarks are recognized based on their reputation on a national, international, and cross-border basis.
What is the definition of a well-known trademark?
According to the Trademarks Act of 1999, “A mark that has become so well-known to the substantial segment of the public who 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,”.
Unlike other trademarks, which are restricted in their goodwill and reputation to a certain geographical region and a particular range of products, well-known trademarks have their goodwill and reputation protected across the country and across categories of goods and services. It is against the law for the Trade Mark Registry to approve and register any trademark that is confusingly similar to one of the well-known trademarks.
Across all classes, well-known marks are protected
This provision broadens the scope of trademark protection available to well-known brands. Well-known trademarks must be recognized and protected across all classes of products and services, according to this provision.
Factors properly considered while analyzing whether or not a trademark is well-known
In order to protect well-known marks from exploitation and infringement, WIPO approved a Joint Resolution Concerning Provisions on the Protection of Well-Known Marks in 1999, which included various factors to determine a well-known trademark. As a member of the World Trade Organization, India incorporated these considerations and codified them in Section 6 of the Trademarks Act. Among some of the determining factors are:
- Knowledge about the mark in relevant sections of the public;
- the duration, extent, and geographical area in which the trademark is used;
- the duration, extent, and geographical area in which the trademark is promoted with respect to the goods and services to which it applies;
- registration or application for registration of the trademark to the extent they reflect the use or recognition of the trademark;
- the record of successful enforcement of the rights in that trademark including the record stating that the trademark has been recognized as well known by any court or Registrar.
Condition for well-known trademark registration
Certain conditions are specifically mentioned in this section that is necessary for the registration of a well-known trademark. These are the conditions:
- That the TM has been used in India;
- That the TM has been registered;
- That the application for registration of the trademark has been filed in India;
- That the trademark is well known in or registered in any other jurisdiction other than India;
- That the trademark is well-known to the public at large in India.
Obligation on the Registrar
It is the registrar’s responsibility to protect the well-known trademark’s interests against identical ones in the case of a dispute and/or infringement, as well as to assess and notice the complainant’s or opponent’s ulterior motives.
Documents needed while filing a well-known trademark application
- Statement of the case – mentioning the claimant’s right on the trademark and describing the claim of a trademark to be a well-known trademark.
- Details of successful enforcement of rights in case the trademark has been recognized as well-known by the court in India or TM Registrar.
- Copy of judgment of any court or the Registrar wherein the trademark has been recognized as well-known.
- Evidence showing the claimant’s right and justifying his claim. Such evidence shall include data/documents showing-
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- Use of trademark, or any application filed for registration of a trademark, or registration obtained.
- Annual sale turnover of the business of the claimant.
- Actual or potential number of customers under the said trademark.
- Publicity and advertisement of the said trademark along with the expenses incurred thereof.
- Knowledge or recognition of the trademark in the relevant section of the public across the globe
The list of India IP Firms can be found here.