How to Obtain a Well-Known Trademark Status in India

A regime for the protection of well-known marks was first introduced by the Paris Convention in Article 6bis, which provides that: “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.”

Subsequently, during the drafting of the TRIPs Agreement, provisions to accommodate the protection of well-known marks as envisaged by Article 6bis of the Paris Convention were incorporated as TRIPs Articles 16.2 and 16.3. 

Article 16.2 provides that in determining whether a trademark is well-known, the Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned, which has been obtained as a result of the promotion of the trademark. 

Article 16.3 provides that Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services, which are not similar to those in respect of which a trademark is registered, provided that use of that trademark concerning those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

The provisions addressing the protection of well-known marks evolved somewhat from the Paris Convention to the TRIPs Agreement. The Paris Convention deals with well-known marks concerning goods alone and provides protection only against use in connection with identical or similar goods. The TRIPs Agreement mandated that protection be extended by Member Countries to registered trademarks against use in connection with goods and services; it also covers dissimilar goods and services to the extent the disputed third-party use is found to indicate a connection between such dissimilar goods or services and the owner of the registered mark, which is likely to harm the owner’s interests. Notably, both conventions do not define what comprises a well-known mark, thereby leaving its definition to the individual Member States.

In India, after coming into force of the Trade Mark Rules, 2017, it has become possible to file a Trademark Application for a mark to be determined as a well-known trademark. Earlier, the only possible way of having your mark recognized as a well-known trademark in India was through a judicial decision. Now, Rule 124 of the Trade Mark Rules, 2017 provides for the determination of a well-known trademark by the Registrar.

What is a Well-Known Trademark?

As per Section 2(zg) of the Trademark Act, 1999, a well-known trademark is defined as “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.”

Statutory Provisions on Well-Known Trademarks in India

1. Rule 124, Trademark Rules, 2017

1. 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.
2. The Registrar, while determining the trademark as well-known, shall take into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999.
3. For the purpose of such determination, the Registrar may call such documents as he thinks fit.
4. 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.
5. 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.
6. 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.

2. Section 11(2) of the Trade Marks Act, 1999

This provision extends the scope of protection provided to the well-known trademarks across all the classes of goods and services. “A trademark, which is identical with or similar to an earlier trademark and is to be registered for goods or services, which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.”

3. Section 11(6) of the Trade Marks Act, 1999

The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact, which he considers is relevant for determining a trademark as a well-known trademark, including:

1. 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;
2. The duration, extent, and geographical area of any use of that trademark;
3. 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;
4. The duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark; and
5. 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.

4. Section 11(7) of the Trade Marks Act, 1999

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:

1. The number of actual or potential consumers of the goods or services
2. The number of persons involved in the channels of distribution of the goods or services; and
3. The business circles dealing with the goods or services to which that trademark applies.

5. Section 11(8) of the Trade Marks Act, 1999

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.

6. Section 11(9) of the Trade Marks Act, 1999

The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:

1. That the trademark has been used in India;
2. That the trademark has been registered;
3. That the application for registration of the trademark has been filed in India;
4. That the trademark:

• Is well known in; or
• Has been registered in; or
• In respect of which an application for registration has been filed in, any jurisdiction other than India; or

5. That the trademark is well-known to the public at large in India.

7. Section 11(10) of the Trade Marks Act, 1999

While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall:

1. Protect a well-known trademark against identical or similar trademarks; and
2. Take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.

The Criteria for Deciding if a Mark is Well-Known in India

The Registrar, while determining whether a trademark is a well-known trademark, takes into account all the facts, which he considers relevant for determining a trademark as a well-known trademark, including the following factors:

1. That the trademark is well known to the public at large in India;
2. The number of persons involved in the channels of distribution of the goods or services;
3. The number of actual or potential consumers of the goods or services;
4. The duration, extent, and geographical area of any use of such trademark; and
5. The business circle dealing with those goods or services.

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 mark by any court or Registrar under that record.

Cost of Filing a Well-Known Trademark Application

As per Rule 124 of the Trade Mark Rules, 2017, any person may file a request for determination of a trademark as well-known along with an official fee of INR 1, 00, 000. This fee is for a single mark.

Application Procedure

The Applicant has to fill up the form TM-M, along with the official fee and supporting documents, which are to be filed online mandatorily.

The essential documents required are:

• 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 in support of the applicant’s rights and claim viz. evidence, as to use of trademark, any applications for registration made or registration, obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred, therefore, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad.
• Details of successful enforcement of rights, if any, relating to the said trademark in the particular extent to which trademark is recognized as a well-known trademark by any Court in India or Registrar of Trademarks, Copy of the Judgment of any court in India or Registrar of Trademarks, if any, wherein the trademark is determined as a well-known trademark.
• The size of the document submitted along with the 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 the total file size should not exceed the limit of 10 MB.

After the receipt of the application, the office will consider the claim of the applicant based on the documents submitted. The office may publish the details of the trademark proposed to be included in the list of well-known trademarks. 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 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.

Concluding Thoughts

Some examples of well-known Trademark Registrations granted by the Registrar after coming into force of the Trade Mark Rules, 2017 are Garnier, Oral-B, 7 Eleven, India Gate, LuLu, TCS, Godrej, India Gate, Biocon, Maruti, and some more. Protection of well-known trademarks under the Trademark Act has been strengthened and redefined with the help of the Trade Mark Rules, 2017. The same has sent out a message that India recognizes the more modern concepts of Trademark Protection. Even though Indian courts were proactive in protecting well-known trademarks, providing enhanced statutory protection with the option of a well-known trademark application has been a step in the right direction not only for trademark owners but also for keeping in mind the interests of consumers and the overall Intellectual Property (IP) policy of the country. ✅  For view source: https://bit.ly/3r1milG