Protecting a Well-known Trade Mark in India
A trade mark may be a sign, design, or expression which identifies goods or services of a person/business from those of others. Section 2(zb) of the Trade Marks Act, 1999, (?the Act?) defines a trademark as ?a mark capable of being represented graphically and is capable of distinguishing the goods or services of one person from those of others?.
Further, a well-known trademark is a mark which has become well-known to the relevant section of public through its extensive and continuous use. Section 2(zg) of the Act defines Well-known trademarks as ?marks of companies that have become so substantial to a section of the public that uses such goods or receives services from those companies, that the use of that mark while using other goods or services would also be taken as a connection with the company that renders such goods or services?.
Requisites for filing an application for registration of well-known trademark:
The Act specifies the provisions of protection of a well-known trade mark in India. Rule 124 of the Trade Marks Rules, 2017 provides for determination of a well-known trademark by the Registrar. For registration of a well-known trademark, an application under Rule 124 is filed through comprehensive e-filing system along with prescribed fees, accompanied with following documents:
- Statement of 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 Applicant?s rights and claims i.e., 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 therefor, 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 relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks;
- Copy of Judgment of any court in India or Registrar of Trademarks, wherein the trademark is determined as well-known trademark.
The Trade Marks Office considers the claims of Applicant on the basis of documents submitted. The office, after reviewing the application and Applicant?s submissions may publish the details of trademark proposed to be included in the list of well-known trademarks. Any person who wants to object to the inclusion of trademark in the list of well-known trademarks, may file his objection to the Registrar of Trademarks stating out the reasons for his objection along with supporting documents.
Once the Office determines the mark as well-known, the same is notified in the Trade Marks Journal and included in the list of well-known trademarks.
Benefits of obtaining a registration of well-known mark:
The Trade Marks Act grants broader protection?to well-known trademarks in order to prevent its misuse. The Trade Marks Office may take well-known status into account while examining third party application(s) for an identical or similar mark.