Well known trademark Made Simple A Step by Step Guide

Well-known trademark play a vital marketing weapons in the hands of entrepreneur's. on the perspective of the consumer trademarks act gives the exclusive right to the registered proprietors of the trademark due to which  one can identify the goods and service they want to consume.

Earlier to the trademark rule 2017 only the court of law or Intellectual Property Appellate Board (IPAB) has a power to decide a trademark as a well-known trademark. But after the amendment in the trademark rules, the trademark rule 2017 has given a power to the registrar of Trademark to declare a trademark as a well-known trademark as per rule 124 of the trademark act,1999 .

Determination of a trademark to be Well Known by Registrar.

1.Any person may, on an application in Form TM-M and after payment of prescribed fees, make a request to the Registrar of trademark for determination of a trademark as well-known.

What are documents accompanied with an application in Form TM-M and after payment of prescribed fees for determination of a trademark as well-known?

An application in Form TM-M and after payment of prescribed fees shall be accompanied by a user affidavit along with all the evidence and documents relied by the applicant in support of his claim.

The documents and evidence required to be submitted while filing a well-known trademark application

a)Statement of case – details of  the applicant right on the trademark and describing the claim of trademark.

b)Details of successful enforcement of rights in case the trademark has been recognized as well-known by the court in India or Trademark Registry in India.

c)Copy of judgment of any court of law or the territorial jurisdictions of trademark offices recognised as well-known.

d)Evidences justifying the claimant's right. Such evidences shall include documents

e)The duration, concurrent use of trademark, or any details about pending or registered trademark.

f)Year wise sales figures with supported documents in the form of tax Invoices.

g)List of Actual or potential consumers of the goods or services under the said trademark.

h)Year wise details advertisement along with the expenses incurred on advertisement with supported documents in the form of tax Invoices raised by Advertisement agency on the Applicant or the Company.

i)Recognition of the trademark in general public across the globe.

While determining the trademark as well-known by the registrar of trademark take in to account the other provisions trademark.

3.While determining the trademark as well-known by the registrar of trademark, the Registrar may call such documents as he thinks fit.

4.Before determining a trademark as well-known, registrar of trademark may invite objections from the general public to be filed within 30 days from the date of invitation of such objection.

5.After determining the trademark as well-known by the registrar of trademark, the trademark shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the registrar of trademark.

6.The Registrar may, at any time, remove  the  trademark  from  the  list  of well-known after  providing  due opportunity of hearing to the concerned party if it is found that a trademark has been erroneously or inadvertently included or  is  no  longer  justified  to  be  in  the  list  of  well-known  trademarks.

Trademark can be declared well known through an application filled in the court of law or with the registrar by form TM-M.

What is Requisite for establishing well-known trademark ?

What is the criteria for determining a Well-Known Trademark?

While determining the trademark as well-known by the registrar of trademark take in to account all the facts which he considers relevant for determining a trade mark as a well-known trade mark including the following factors:

a) The trademark should be well-known to the public at large in India by consuming those goods or services or due to Advertisement & marketing activities are done by Applicant of well-known mark. 

b) The duration, concurrent use of trademark, extent for which that trademark is being used in the business & trade or geographical area of any use of such trade mark

c) The number of actual, genuine or potential consumers of the goods or services;

d) The business circles dealing with those goods or services to which the trademark applied by Applicant of well-known mark.

Section 11(10) in The Trade Marks Act, 1999 clearly states that the registrar is under an obligation to

(i) protect a well-known trade mark against the identical or similar trademarks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

while a pending application for registering trademark has been filed with the court or with the registrar of Trademark or Trademark Registry in India.

In simple language well-known trademark means no one can use the term well-known trademark and if done so would lead to infringement proceedings against him/her/them. Therefore, the consequences of being declared a ‘well known’ trademark are open a new opportunities for the company.

Remedies available for infringement of well-known trademark

Advantages of attaining a status of the well-known trademark

After determining a trademark as well-known by the court of law, Intellectual Property Appellate Board (IPAB) or Registrar of Trademark; the act restrict to not register any trademark that is identical or similar with well-known trademark in any class or classes. Well-known trademark will be protected across all classes of goods and services on Request the identical or similar trademark will be removed from the register of the well-known of infringing mark.

Prevent use of the trademark in form of name/logo/word mark etc.

Punitive and compensatory damages:-  means compensatory damage to the plaintiff for the use of the well-known trademark.

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