Jul 01, 2017

Well-known Trademarks

The Trade Marks Rules, 2017 (‘New Rules’) and the public notice dated May 22, 2017 issued by the Trade Marks Registry inter alia provide for a mechanism whereby brand owners can file an application with the Registrar of Trademarks (‘Registrar’) for determination of a trademark as ‘well known’[1]. The key provisions in connection with this mechanism have been briefly summarized below:i. The application to the Registrar for determination of a trademark as ‘well-known’ will have to be based on, inter alia, the following criteria:a. knowledge or recognition in the relevant section of the public;b. duration, extent, geographical area of use and promotion / advertisement;c. duration and geographical area of any registration of or any application for registration reflecting use or recognition of the trade mark;d. record of successful enforcement of the rights by any court or the Registrar; ande. number of actual or potential consumers / person involved in the distribution of the goods or services.The application will have to be accompanied by documentary evidence for each fact that is sought to be claimed including evidence as to use of the trademark, including publicity and advertisement, applications for registration made or obtained in India and outside, annual sale turnover based on the trademark etc.ii. If the Registrar determines that the trademark is well-known and after deciding on the objections received (if any), the Registrar will publish the mark in the Trademark Journal and include it in the list of well-known trademarks. An appeal lies to the Intellectual Property Appellate Board (‘IPAB’) within three months from the date of any decision of the Registrar.The New Rules do not provide for a specific time frame within which the Registrar will determine if the mark is well-known. One of the main advantages of the ‘well known’ mark status in India, if the mark is registered, is the availability of a remedy of dilution under Section 29(4) of the Trade Marks Act, 1999.[1]     The term ‘well-known trade mark’, in relation to goods or services, is defined under Section 2(1)(zg) of the Trade Marks Act, 1999 to mean 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. 




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