How to get a “well known” trademark status for your mark in India
What is a well-known trademark?
The Trademarks Act, 1999 has defined a well-known trademark under Section 2(zg) of the Act as ‘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.’
In short, it refers to a mark which is popular and recognized easily by the public.
Trademarks Designated as Well-known trademark
There are a few marks which the Indian Trademark Office has explicitly recognized as well-known trademark. These are basically marks which have been determined so by a competent adjudicating authority like the High Courts in India, Intellectual Property Appellate Board and the Supreme Court through their observations in judgments.
Some of these marks include BENZ, BISLERI, AIWA, ENFIELD BULLET, Infosys. Ofcourse there will be marks not covered by this list and yet prominent among the public.
Declaration of a mark as well-known under Trademark Rules, 2017
Till the introduction of the Trademark Rules 2017, a mark was predominantly accepted as well-known trademark based on judgements and observations by various competent Courts and Tribunals as is evident from above but presently through the New Rules, the Trademark Office has come out with a new method of declaring marks as well-known; by filing an application for the same.
Rule 124 of the Trademark Rules 2017 puts forth that any person may file an application in Form TM-M along with the prescribed fee to designate its mark as well-known trademark. In order to establish that its mark is indeed well-known trademark, the applicant will have to support its claim with a statement to that effect and supporting documents. The Rule further adds that the Registrar shall also take into consideration the provisions of Section 11(6) to 11(9) of the Act, when such an application is submitted to him.
Another significant point is that the Registrar is also at liberty to invite objections from the public, before declaring the said mark as well-known trademark. If there are no such objections, then the mark shall be advertised in the Trademark Journal and become part of the well-known trademark list. What happens if at all objections are received from the public is not elucidated by the Rules but I assume the logical solution would be to conduct a hearing to determine if the mark is well-known trademark or not.
The fee for making such an application is INR 100,000 and such application has to be filed online. There does not seem to be a provision to physically file such an application which is quite understandable with the Trademark Office’s urge to go digital.
What does Section 11(6) to 11(9) say?
Broadly put, Section 11(6) to Section 11(9) breaks down the criteria that the Registrar shall look for, among other things, to determine a well-known trademark. Certain factors which the Registrar shall look for, shall include knowledge/recognition among the relevant section of the public in respect of the said mark, geographical extent and length of time for which the mark has been promoted and used, number of actual and potential users of the products/services under the mark, any successful ruling by which the mark has been determined as well-known trademark by any competent authority etc. Section 11(8) mentions that where a trademark has already been ruled as well-known trademark among a relevant section of the public, by a Court or Tribunal, then the said mark shall be determined to be well-known trademark.
In this connection, it is pertinent to note that Section 11(9) specifically lays down that it is not mandatory for a mark to be registered or application pending in India or have usage in India to be declared well-known trademark. Similarly as per the same clause, it is not even mandatory that a mark to be considered well-known trademark, has to be popular and well-recognized by the public at large in India.
In this age of technological advancement where it is easy to access information across the globe, the said clause appears to quite relevant, especially with regard to well-known trademarks.
Procedure for Registration as Well-known trademark
As mentioned earlier, a request to declare a mark as well-known trademark has to be made in TM-M. A detailed analysis of Form TM-M, especially with regard to well-known trademarks was also made by my colleague, in his article. Interestingly, from the Form TM-M for well-known trademarks, it appears that it is necessary to provide an application number for the subject trademark to be declared well-known, even though there are radio buttons to mention if your mark is registered with the Trademark Registry or not, which, in such a case, would imply that the provisions laid down in Section 11(9) might basically be redundant and it would not be possible to get your mark a well-known trademark status unless an application is filed in India.
Declaration as well-known trademark as a procedure
It is true that the holders of well-known trademarks can now easily get their mark recognized as well-known trademark with the simple procedure set through Form TM –M. However we cannot ignore the fact that this form paves way for any entity to apply for its mark to be declared as a well-known trademark.
Thus at this point, we can only hope that the Registry is extremely cautious, stringent and looks into several factors before declaring a mark to be well-known trademark, lest we have a sudden string of well-known trademarks!