Well known Trademarks In India
Trademark Rules, 2017 as effective from 06.03.2017, have introduced a crucial change with empowerment of the Registrar of Trademarks to declare a mark as well known trademark.
This can be considered to be the most welcome change to signify the IPR as an asset for a company and to prevent its possible infringements as well.
A well known trademark as defined under Section 2(zg) of the Trademarks Act, 1999 is:
“Well known trade mark, in relation to any goods or services, means 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.”
Application for well known mark– The Applicant shall have to file an application under Form TM-M under Rule 124 of the rules.
It shall be filed with the Registrar for determination of a trademark as a well known trademark.
Documents & Evidence – Application should have evidence towards the use of the Trademark over a long period of time.
It should also accompany other documents supporting its claims that the mark has made a unique place for itself in the minds of the consumers. It should be adduced at the time of filing application only.
Fees – Rs. 1 lakh (Rupees One Lakh).
Process Of TM-M versus TM-1 – The process of the filing of the application is very similar to filing the erstwhile TM-1 application in as much as the Registrar will decide the application by taking into account the provisions of Section 11 of the Trademark Act, 1999.
The Registrar, after receiving application, can give relative grounds of refusal of registration and/or he may also call for further documents/evidences to reach a conclusion whether the mark is a well known trademark.
Pre Well Known Declaration – The Registrar before declaring a mark as a well known trademark would invite objections from the general public. Publication in Journal – Once the trademark is declared a well known trademark, it would be published in the journal.
Inclusion under List of well known mark – A well known mark shall be also included in the list of well known trademarks maintained by the Registrar.
Removal From Well known mark – The mark, if found to be erroneously included in the list and not justified, may even be removed after providing an opportunity to the party for a personal hearing adhering to the principles of natural justice.
It is pertinent to note that till the date various well known trademarks had been declared through the order of the Courts in India.
Note – Earlier, the power to declare a well known trade mark only vested with the Courts wherein it was done by passing an order. It was declared by deciding upon the disputes of its use, its popularity and its perception & popularity among the common public with prudent understanding.
The existing well known trademarks in India are Bajaj, Whirlpool, Honda, McDonalds, Pepsi etc.
It is advisable that a trade mark having goodwill and branding in India should get themselves in the well knonw trademarks list so as to prevent itself from possible infringements and enjoy various implied benefits by being included in such list.