India: Well-Known Trademarks – India Perspective

Till the present day, there are 81 declared well-known trademarks in the list maintained by the Trademark Registry in India. By the introduction of one step procedure for determining a trademark as well-known, the list is expected to increase very soon. This is the right opportunity for trademark owners in India or overseas to have their trademarks accepted and declared as well-known in India so that their trademarks are protected from being infringed or passed off by any unauthorized person.

INTRODUCTION

With the emergence of several social media platforms and innovative advertising ideas the reach of brands to the consumers have increased tremendously. Consumers are growing aware of trademarks associated with such famous brands. A huge amount of time, money, and resources are being spent by the owners of the trademarks to maintain their popularity in this globalized world. The tag of 'well-known trademark' in such a competitive market would be like attaining 'MOKSHA' for trademark owner as with the tag of the well-known trademark the basic aim for the protection of trademark shifts from the 'consumer deception' to preserving the distinctiveness of a trademark by protecting it against dilution and tarnishing. Hence, proof of confusion and deception, which is one of the traditional requirements of trademark infringement actions and passing-off actions, becomes a secondary consideration in the protection of well-known trademarks.

Indian Trademark Law recognizes well-known trademarks and has adopted the criteria that has been laid down under Article 6 of the TRIPS Agreement.

The statutory definition of a well-known trademark is given in the Trade Marks Act, 1999, ("Act") 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.

Further, there are provisions in the Act which lays down the factors which deals with the various matters concerning protection of well-known trademark. They are in the nature of explanations, which may arise in the context.

Under the Act, the Registrar of Trademarks (Registrar), while determining whether a trademark is a well-known trademark, will have to take into account any fact which he considers relevant for determining a trade mark as a well-known trademark including-

  1. the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;
  2. the duration, extent and geographical area of any use of that trademark;
  3. the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
  4. the duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trade mark;
  5. the record of successful enforcement of the rights in that trademark, in particular the extent to which the trademark has been recognised as a well-known trademark by any Court or Registrar under that record.

Also, while determining the knowledge and recognition of the trademark in the relevant section of public as mentioned above the Registrar will have to take account of-

  • the number of actual or potential consumers of the goods or services;
  • the number of persons involved in the channels of distribution of the goods or services;
  • the business circles dealing with the goods or services to which that trademark applies.

The law is very clear regarding the fact that if a trademark has been determined to be well-known in at least one relevant section of the public in India by any Court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under the Act.

The Act states that while determining a trademark to be well-known, the Registrar shall not require as a condition that the trademark has been used or registered or has been applied for registration in India. It also states it is not essential that the trademark should also be well known to the public at large in India. Further, it is also not a condition that the trademark is well-known or a registered trademark or the pending registration or pending in any jurisdiction other than India.

Once a trademark is declared as well-known by the Registrar or by any courts, the trademark registry while dealing with any new trademark shall not register any similar or deceptively similar trademark that is identical or similar to the 'well-known' trademark across all classes of goods and services. For e.g. "SONY" has been declared as a well-known trademark under the Indian law which means that in India only Sony Corporation can use or register the mark "SONY" in any class of goods and services. Similarly, if there is an infringement proceeding, a 'well-known' trademark can be asserted against defendants dealing in entirely different goods or services. Therefore, a well-known trademark is of great importance to the trademark owners and has huge commercial implications.

A recent amendment in the Indian Trademark Rules, which have been notified as 'The Trademark Rules, 2017' ("Rules"), has created a lot of buzz amongst the trademark owners. A new procedure for filing of an application for the determination of trademark as well-known by the Registrar has been introduced. Prior to enactment of any such Rule, the process of declaring a trademark as well-known was solely decided by the Courts or Tribunals, resulting out of a full-fledged contested litigation or legal proceeding. A mere claim that the trademark is well-known by the owner of the trademark is not sufficient.

Under the notified Rules, the trademark owner can now file an application for declaration of their trademark as a well-known trademark before the Registrar by making a payment of prescribed fee of INR 1 lakh (USD 1550 approx.). While reviewing such an application, the Registrar would determine whether the said trademark is to be considered as a well-known trademark or not based on the provisions laid down in the Act as mentioned above. Under the Rules the trademark owner can now directly proceed to protect his trademark as well-known, without initiating any infringement or opposition proceedings. Though the Rule does inflict certain duties on the general public as they are free to object and such objections are to be filed within 30 days from the date of invitation of such objection.

In order to further streamline the procedure for filing of an application for well-known trademark, a notice has been issued by the concerned authority. The notice includes certain requirements to be fulfilled by the applicant while filing the application for inclusion of a trademark in the list of well-known trademark.

The general guidelines include:

  1. The application should be accompanied with following set of documents:

Statement of case:

This should describe the applicant's rights in the trademark and also the applicant's claim that the trademark is a well-known trademark, clearly and in a proper manner.

Evidence in support:

Evidence in support of the applicant's rights and claim is to be filed along with the application. In other words the application should be accompanied with:

  1. Evidence as to use of trademark.
  2. Any applications for registration made or registration obtained.
  3. Annual sales turnover of the applicant's business based on the subject trademark duly corroborated.
  4. Evidence as to the number of actual or potential customers of goods or services under the said trademark.
  5. Evidence regarding publicity and advertisement of the said trademark and the expenses incurred.
  6. 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:

If there are any enforcement 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, those details have to be clearly stated.

Copy of the Judgment:

If there is a judgment by any Court in India or Registrar, where the trademark is determined as well-known trademark, such judgment should be given with the application under rule 124.

The size of the document:

The documents submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB.

  1. After the receipt of the application, the controller will consider the claim of the applicant on the basis of documents submitted.
  2. The office may publish the details of trademark proposed to be included in the list of well-known trademarks.
  3. Any person, who wants to object the inclusion of the said trademark in the list of well-known trademarks, may file his objection in writing to the Registrar stating out the reasons clearly for his objection and also the supporting documents, if any exist.
  4. Copy of the objection will be communicated to the applicant for comments within stipulated time.
  5. Office will communicate the decision in respect of the objections to the parties concerned.
  6. Final decision of the office regarding inclusion of the trademark in list of well-known trademarks will be communicated to the applicant.
  7. In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website.

Till the present day, there are 81 declared well-known trademarks in the list maintained by the Trademark Registry. By the introduction of one step procedure for determining a trademark as well-known, the list is expected to increase very soon. This is the right opportunity for trademark owners in India or overseas to have their trademarks accepted and declared as well-known in India so that their trademarks are protected from being infringed or passed off by any unauthorized person. At the same time, the Registrar ought to follow a cautious approach while considering applications for determination of trademarks as well-known, since once a trademark is declared as well-known, it will preclude any other party from using such trademark (or even similar to it) in respect of other goods and services.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.