In the year 2019 over 3.5 lakh, trademark applications were registered in India. It is growing at a rapid speed and with this, it is expected that by the year 2025 more than 6 lakh applications will be registered every year only for trademark.
With the publication of the new Trade Mark Rules 2017, a new procedure has been established that allows the Registrar to declare a specific trademark to be “well known.” According to the new rule, a trademark owner can file an application in form TM-M with the Registrar requesting that the mark be declared “well-known.” A well-known trademark has been granted exceptional safeguards and protection against infringement and passing off. Well-known trademarks are recognized in India based on their reputation, both nationally and internationally, as well as across borders.
What is a Well-Known Trademark
The Trademarks Act, 1999, defines a well-known trademark as, “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that use of such mark in relation to other goods or services is likely to be interpreted 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.”
The criteria used to determine whether a trademark is well-known
While determining whether a trademark is a well-known trademark, the Registrar shall consider all facts that he considers relevant for determining a trademark as a well-known trademark, including the following factors:
- That the trademark is well known to the general public in India;
- The number of people involved in the distribution channels of goods or services;
- The number of actual or potential purchasers of the goods or services;
- The duration, scope, and geographical scope of any use of such a trademark;
- The business community that deals with those goods or services.
- The record of successful enforcement of rights in that trademark, specifically the extent to which the trademark has been recognized as a well-known mark by any court or Registrar under that record.
The Trademark Rules 2017. (Rule 124)
The Trademark Rules, 2017 are the most recent version of the rules in India for trademark registration. This rule allows trademark owners to approach the Trademark Registry in order to have their “well-known trademark” recognized. It also establishes the criterion for determining well-known trademarks via a separate application. Anyone wishing to have a well-known trademark determined may file an application with the registrar and pay a requisite amount (paid online) in TM-M form. Rule 124 allows the registrar to grant a trademark the status of “well-known” based on a request in the form of an application.
How to file a Well-Known Trademark?
|Prior to the existence of these rules, a trademark was provided with a well-known mark after a series of proceedings as an adversarial position before a court of law or appropriate tribunal.|
The most recent rule, “The Trademark Rule, 2017,” states that a person seeking to register his well-known trademark may file an application with the registrar of the Trademark Registry in the proper format of TM and pay an application fee of one lakh rupees. Along with the documents, the applicant must provide the necessary documents, evidence, and a statement of the case. When determining whether a trademark is valid for registration, the registrar considers the relevant factors outlined in Sections 11(6) to 11(9) of the Trademark Act of 1999. The application must be filed online through the Trademark Registry’s e-filing service.
What is not required for the registration?
The section specifically mentions certain conditions that do not need to be met in order to grant a well-known trademark. These conditions are as follows:
- The TM has been used in India;
- The TM has been registered;
- A trademark registration application has been filed in India;
- The trademark is well known in or registered in any other jurisdiction other than India;
- The trademark is well-known to the general public in India.
Thus, it can be stated that for a trademark to be granted protection in India, it is not necessary for the mark owner to have a business in India or for the trademark to be registered in India, nor is it necessary for the trademark to be known to the general public. 3 As a result, the specific provision includes the concept of trans-border trademark reputation.
Infringement of Well-Known Trademark
Section 27(2) of the Trademark Act prohibits the use of well-known trademarks that are similar or identical in similar or distinct goods and services. Sections 29 and 30 of the Trademark Act of 1999 deal with the provision of a remedy in the event of trademark infringement.
For the purpose of redress in the event of trademark infringement, whether it is a common or well-known trademark, it must be registered in India. If the well-known trademark registered as the ordinary trademark is used for identical goods and consideration, Section 29 subsections 1, 2, and 5 will apply to the well-known registered trademark in the same way that they apply to the ordinary registered trademark. The distinction in action following the infringement of a normally registered trademark and a well-known trademark is brought forward through a series of events outlined in Section 29(4) of the Trademark Act of 1999.
According to the aforementioned section, “a registered trademark with a reputation in India is said to have been infringed if any person uses a trademark similar to a registered trademark, or similar trademark used for different goods or services, or there is a malicious intention to profit from the registered trademark’s repute.” This provision is consistent with India’s TRIPS obligations.
In several cases, the courts have imposed punitive damages in order to deter infringers and those who copy registered well-known trademarks. In Time Incorporated vs. Lokesh Srivastava, the Delhi High Court ruled that when there is an infringement of intellectual property law, the court must award both punitive and compensatory damages. The court in the aforementioned case awarded 5 lakhs in punitive damages and 5 lakhs in compensatory damages.
Everyone desired the well-known tag, which was thought to be the Holy Grail for trademark owners. But only a few got it. In only two years, the number of well-known trademarks has increased from 68 to 81, with the Delhi High Court granting 45 of them. The first part has been addressed with the publication of The Trademark Rules . There is now the possibility of multiple applications for well-known trademarks being filed. However, the Registrar must proceed with caution when considering these applications, because once a trademark is registered as Well-known, no other party may use a mark that is even remotely similar to it.
A well-known trademark is a proprietary asset for a company, providing it with numerous benefits, with no similar marks permitted for any goods or services. However, it is critical to maintaining the exclusivity of these well-known trademarks in order to preserve their authenticity.