The new trademark rules 2017 have replaced the Trademarks rules 2002. The most noticeable changes brought upon by the 2017 rules are:
- Official filing fees has been revised and changed.
- The forms for filing trademark are reconsolidated and categorized anew.
- Processing and application procedures are expedited, and
- One of the potentially controversial additions is RULE 124 of the new rules.
RULE 124 of Trademarks Rules 2017: says in the simplest words that an owner of the trademark may approach the Registrar of the Trademarks and apply to have their Trademark to be declared as well-known mark. The above application needs to be supported with documents showing all the evidences that the said trademark is known and recognized and thus a well known mark along with an official fees of 1,00,000 INR as is mentioned in entry 18 of Schedule 1. Also, if the owner wants to have both the word mark and logo mark recognized as a well known mark separate applications need to be made.
The factors that help in deciding whether a word mark is to be categorized as well known work marks are as follows:
- That the mark is known and recognized by the relevant section of the public.
- Duration/ extent/ geographical area of promotion of the mark in question.
- Duration/ extent/ and geographical area of them mark in use.
- Registration whether obtained in respect to the said mark.
- Successful enforcement actions taken in regards to making the mark to be known by all those in the relevant section of the public.
- Section 11(8) says that the mark shall be registered and recognized by the registrar.
Till the introduction of the 2017 trademark rules, the declaration of mark to being a well known mark was through judgments and observations made during court proceeding, now the new trademark rules have come out and thus one curiosity does appear after the rules have been passed being:What about those marks that have been declared well known marks by the Courts before Trade Mark rules 2017, what is their status now, that the new rules of trademark 2017 are in execution?
This has been cleared by the Public Notice issued by the Controller General of Patents, Design, and Trade Marks on 22.05.2017 where in they've state guidelines to be followed in respect to Rule 124, in this they have given a list of documents that shall be attached to the application. In this they've clearly stated that a copy of the judgment of any court or Registrar of trademarks needs to be produced along with the application wherein the trademark is determined to be a well-known Trade Mark.
Thus marks that are already declared as well known marks those marks are also catered to by the Rule 124. Thus any owner of a trademark who owns a well known mark has to now go to the Registrar with the copy of the judgment wherein they were declared well-known.
While, Section 11(9) read with Rule 124 says that for the registrar to determine a mark as a well known mark this isn't precedent to the conditions that:
- the said mark has been used in India or
- is registered or
- An application has been filed , or
- Whether it is well known to public or not.
Thus a synopsis of what we gather of section 11(9) read with Rule 124 it can be seen that it is not a condition precedent that the mark is either used or not used in India, or for which there isn't any pending registration application or not, or whether is known in India or not.
This means this particular Rule opens door for foreign companies and their marks to be given the status of well known marks irrespective of their popularity in the local market that is just in accordance to trans-border reputation. This is the inception of marks that have local or regional use and reputation to go ahead and apply for well known mark status.
The registrar can also remove some mark from the list of well known marks if any mark was erroneously or added after hearing. Also the Registrar has the liberty to invite objections from the public before declaring the mark to be well known.
One question that has turned out to be outrageously amusing is that: Whether the existence of a list of well known trademarks with the registrar mean an automatic recognition of that mark by the courts, and that the owner doesn't in front of any court of law have to prove that his mark is reputed in any case of infringement and passing off of his mark registered under Rule 124?
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