Well-Known Trademark: Understanding its Legal Significance

Well known trademarks are famous mark, logo or any symbol which represents a brand and the hard earned goodwill and the reputation. It becomes a much known mark depending on the following:-

A. The degree of recognition it receives in the relevant area

B. Duration of getting that recognition

C. Extent and Geographical area of Recognition

D. Value associated with it

Such as Pizza Hut, Burger King, Subway, Dominos, Bajaj, Bisleri, Honda, Horlicks, Infosys, Amul, etc. These are the popular brands which qualify for well known trademarks.

Section 2(1) zg of Trademark Act, 1999 gives the statutory definition of well known trademarks.

‘Well Known Trademark’ involve goods or services which means a mark that has became do that the substantial segment of public which uses goods or receives any such service that the use of such mark about the other goods or service would likely be taken as mentioning connection in course of trade or rendering services between the goods and services and the person who uses the mark concerned with the first mentioned goods and services.

The definition given for the same is:-

A major or substantial segment of population which uses the goods and service recognising the trademark which is represented by brand. The general public perceives the trademark which is used by anyone who concern goods or services as it belongs to the proprietor of mark. In that situation the trademark qualifies as a well known trademark.

Why is Well Known Mark significant?

The importance of well known trademark is in the fact that it brings substantial commercial value for the trademark owners. Registration and unauthorised using of a trademark is an infringement of trademark. This unauthorised use of such trademark confuses the consumer about the quality of the product with the consumers which damages the brand reputation. Illegitimate imitation of trademark is a punishable offense.

For e.g. if a cloth manufacturer uses a known trademark for which the company is not original owner, its a trademark infringement case.

Protection of well-known trademarks:

1. It provides protection from registration of brand from a third party
2. Protection from misusing the trademark.

Trademark is required to maintain the goodwill and reputation of the company so, this trademark registration is much essential. As being signatory in the Madrid Protocol the registration of a trademark is easier in international scenario. This Registration also protects the popular marks against the infringement and dilution which means that the reputation of the mark is being weakened by an unauthorised usage of that mark by other company.

How to list your mark as well known?

This includes 97 marks which are listed as well known in the official records of the Intellectual Property. Earlier this was that the proprietor of any famous trademark can only establish the mark as well known through judicial proceedings before any court. But after the changes in Trademark Rules 2017, the ‘Ease of doing Business in India’ and ‘Startup India’ initiatives have been promoted. As a result, the proprietor of any Famous Mark could apply directly to the Registrar of Trademarks for inclusion of the mark into a list of well known trademarks.

These New rules mention the conditions and requirement which are to be followed by owners of marks for declaring the marks as well and much known. The rule 124 of Trademark rules 2017 provides that any person can apply the form with a prescribed fee for designating its mark as a well known trademark. Here, the applicant shall support the claim with statements and supporting documents.

After which the Registrar should also consider provisions of Sections 11(6) to 11(9) as when this type of application is submitted to him. It provides that while determining a mark such as a well known trademark, the trademark registrar has to take in account any fact that is considered relevant in determining a brand which is a well known trademark.

Determination of Well Known Trademark:-

1. The knowledge and the recognition of trademark in relevant section of public which includes proficiency in India of that mark.
2. Duration, Extent and Geographical area for any use of such a trademark, which includes advertising or publicity and the presentation at the fairs or exhibitions of goods and services for which the trademark applies to.
3. Duration and Geographical area of any registration or an application for registration of trademark under the act which extends till reflects the usage or recognition of the trademark.
4. Record for successful enforcement of rights in that trademark which in particular helps to the extent for which the trademark is recognised as a well known trademark by a court or registrar.

The Registrar is at liberty for inviting objection from the public before announcing the stated mark as a well known trademark. As, if there is no such objections, these marks should be advertised in the Trademark Journal and become part of well known trademark list. The fees for making such application is 1,00,000 and this kind of application is to be filed online.

Section 11 (9) provides that the trademark does not need to be registered or any type of application which is pending or has a usage to be declared as a well known trademark. Same per the clause, its not mandatory that a mark is to be considered a well known trademark, popular and much recognised by public in the country.

Provisions relating to well-known trademarks

1. Rule 124 of Trade Mark Rules 2017

It permits the trademark owners for filing an application for granting ‘Well known’ trademark to registrar in TM-M. before this rule, a mark was declared well known after the proceedings, rectification and opposition which was held before Hon’ble courts. With the coming of this rule and procedure given an owner of trademark could apply for a well known trademark without getting in any proceedings or rectification. Rule 124 ensures that for granting a trademark ‘well known an application shall be submitted in the registry.

2. Trademark Act, 1999

i. 11 (2) Protection of well-known marks across all classes

The provision extends to the ambit of protecting the well known trademarks. So, according to this, the well known trademarks are recognised and patented in all the classes of goods and services.

ii. 11 (6) Factors taken into consideration while determining the trademark as well-known

The WIPO adopted the joint resolution on the provisions of the protection of Well known marks in the year 1999 for protecting the well known marks from misusing and infringing whereas various other factors for determining a well known trademark are provided in it. India adopted this in Section 11(6) of Trademarks Act. The factors include:-

1. Knowledge about mark in relevant sections of public
2. Duration, Extent and Geographical area in which trademark is used.
3. Registration or Application for registration of Trademark till the extent it reflects the use and recognition of the trade mark.
4. Record of the successful enforcement of rights in trademark which includes the record mentioning that the trademark is recognised as a well known by any court or registrar.

iii. 11 (9) – Conditions not required for well-known trademark registration

It provides certain conditions which need not to be required for the purpose of granting a well known trademark. It is as:-

1. Trade Mark is being used in India;
2. Trade Mark has been registered;
3. Application for registration of the trade mark has been filed in India;
4. Trademark is well known in or is registered in any other jurisdiction apart from India.
5. Trademark is well known and popular to the public at large in the country.

iv. 11 (10) –Obligation on the Registrar

Its an Obligation on the registrar that for any dispute and/or any infringement the registrar shall protect the interest of well known trademark against identical ones and should also take consideration and notice any malafide intention and ill motive of the complainant/Opponent.

Summary of the Process:-

1. Form TM-M:- Its mandatory for providing an application number for the trademark for being declared well known, even when its necessary to mention some if the mark is registered with the trademark registry or not, which in these cases would imply that the provisions which are laid down in Section 11(9) could be redundant and it won’t be possible for getting the mark a well known Trademark status unless this application is filed in India.

2. An official fee of Rs.1,00,000:-

3. An application accompanied by the evidence of use of a trademark over a long period.

4. Documents which support the claims that the mark has an unique reputation in the minds of consumers. It shall be presented at the time of filing the application.

5. The Registrar upon receiving application could provide grounds for refusing the registration. They can also call for further documents/evidence to conclude whether mark is a well known trademark.

6. Before declaring the mark as a well known trademark, the registrar will invite objections from the general public. Ans once the trademark is declared well known it should be published in the journal.

7. The Registrar should include a well know mark in list of well known trademark which are maintained by the registrar.

8. Registrar upon founding an error which is included in the list but not justified, can remove the mark . After providing the chance to the party for personal hearing which adheres to principles of the natural justice.

9. Its much prudent that trademark have a brand value, reputation and goodwill in India. It shall be included in the list of well known trademarks for protecting it from the potential future infringements. This can claim benefit as to other well known trademarks.