4A IP SOLUTION

All you need to know about “well known Trademarks”

The word trademark has been recognized by the Trademark Act, 1999 as a mark that has received well-known recognition by the public from across the world. Well known trademarks are classified in this category from the provisions of the new trademark rules of 2017 of the Trademarks Act in India. For a trademark to be recognized as well-known, it must have won enough fame to the public worldwide. The goods and services offered by a trademark owner is supposed to have wide acceptance in national and international markets. The recognition of trademarks as well-known trademarks may enhance its protection against the infringement and encroachment by third party. In cases of infringement of well-known trademarks, the courts have generally held the infringers liable for violations and defence that he was not aware of the mark is well-known trademark has always been ruled out.

The new rules of 2017, apart from provisions of the Trademarks Act, 1999, allows the owner to make an application for a well-known trademark to the registrar by filing form TM-M and attaching all the relevant documents necessary. Not every trademark can get the well-known trademark recognition unless an eligibility test and other requirements are fulfilled.

Following are the factors that are taken into consideration for recognition of trademark as a well-known trademark:

A good reputation of the mark in the public;
The duration of time in which the trademark got recognition in public in geographic coverage where such trademark is used;
The wide acceptance of the trademark in geographical area in which the trademark is promoted in respects to the goods and services offered by the owner;
The evidence of the utilization and recognition of the trademark in the application documents that proves the public knowledge of the mark;
A supporting document acknowledging the confirmation of the trademark as a well-known trade mark from a court of law or a registrar.

Mistaken conditions for application of well-known trademarks not needed.

The section 11 (9) of the Trademark Act lists out conditions that are not necessary for registrar to take into consideration while determining whether trademark is well-known trademark or not;

That the TradeMark has already been used in India;
That the Trade Mark has been registered.
The application has been made in India.
That the trademark has been registered in another jurisdiction other than India.
That the trademark is well-known to the public of India.

The provisions of the new trademark rules, 2017 indicates an individual trademark owner to file an application for a well-known trademark to the registrar online and shall pay application fees of Rs. 1,00,000/-. All the necessary documents shall be required to be uploaded. The documents required are listed below:

Statement of case – it’s a description of the right of ownership of the trademark and the grounds for being a well-known trademark;
Information on enforcement of the rights for the case when the trademark is recognized as a well-known mark;
A copy of supporting document that proves that the trademark is a well-known trademark from the court or registrar;
Statement of justification of applicant for the mark as a well-known mark.

Conclusion:

With enforcement of the new trademark rules of 2017 and complying with all the eligibility requirements for well-known trademarks, the registration procedure becomes smoother of trademark as a well-known mark.