The legislations surrounding trademarks have indeed changed the notions of commerce and have pronounced influence on how trade is carried forward in this 21st century. The Trademarks Act 1999 was enacted by the Indian Parliament following the WIPO Resolution and the TRIPS agreement to which India is a signatory nation. It was the first of its kind legislation that granted statutory protection to these ‘well-known trademarks’. The Act came into force[S1] in 2003.
What is a Well-known Trademark?
The Trademarks Act 1999 [S2] entails out an exclusive definition of well-known trademarks under Section 2(1)(zg) of the Act and defines the same as a trademark, that is not limited to certain geographical areas and rather carries, relatively high reputation, is well received and widely known to a prominent section of the public. Other criteria include the duration of use of the trademark. Section 11(6) discusses the factors to be taken into consideration while declaring a well-known trademark. This includes,
- 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.
- The duration, extent and geographical area of any use of that trademark.
- 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.
- The duration and geographical area of any registration of or any publication for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark.
- 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.
The Courts and Adjudicating authorities (Registrar) have the final say in determining a trademark as a well-known trademark. Well-known trademarks are differentiated from normal trademarks by the wide ambit of protection they receive, unlike any other. Section 11(2) of the Act talks about the same and will be elucidated in detail, in an undermentioned subtopic.[S3]
The process for registering of a trademark as a well-known trademark has comparatively changed since the incorporation of the Trademark Rules of 2017. Rule Number 124 talks about the same.
The mandatory requisites for the same are:
- Duly filled Application in Form TM-M
- Prescribed Fee
- A Statement of case
Process following the compilation of requisites:
- An online application shall be filed online through the e-filing services of trademarks at the official website: ipindia
- The application has to be accompanied by a fee of ₹1,00,000 as stipulated under Schedule I.
- The Statement of the case must include evidence in support of the applicant’s rights and claim. This must include intrinsic, vital details such as:
1. The annual turnover of the company.
2. The advertisement expenses incurred to promote the trademark among the masses.
3. The potential customers it holds under its roof.
4. Recognition applications for registration made or registration obtained.
5. Corroboration between the business and the subject of the trademark.
6. Evidence proving reputation or recognition of the trademark in the relevant section of the public in India and abroad.
7. Judgement Copy, if recognized as a well-known trademark by any Court in India.
8. Details of successful enforcement of rights, if recognised by the Registrar of Trademarks.
- The total file size which contains the application, documentation ad statement of case must not exceed 10 MB. The documents must be in PDF format with an optimal resolution of 200 X 100 dpi on A4 sized papers.
If the request is approved by the Registrar, the trademark will be included in the existing list of well-known trademarks and the same shall be published in the Trademark Journal. However, this is not concrete and at any point of time, the Registrar may reverse [S4] his decision and remove the trademark from the list of well-known trademarks, if he feels that the trademark has lost its ‘well-known’ tag. This, after giving due opportunity to the company to present its counter-evidence/arguments, following the principles of the Right to be heard.
With the easier process explained, companies can also approach the Courts of the land for recognition of a Trademark as a well-known trademark. Companies used to follow this procedure by filing an application for the same, with a duly filled TM-M form in a Court of law. For instance, leading car manufacturer Toyota was granted its well-known trademark tag by the High Court of Delhi in the year 2007, on an application moved by the Toyota Motor Corporation before the Hon’ble Court, preceding the enactment of Trademark Rules of 2017.
Wide Ambit of Protection:
The unexpurgated interest that companies show for attaining the status of a well-known trademark is courtesy of multi-faceted ambit of protection that the tag brings in. Under Section 11(10) of the Trademarks Act, it is the obligation of the registrar to protect the well-known trademark at any cost in the event of any dispute or infringement issues pertaining to the same. The Registrar is also bound to notice the negative interests of the opposite parties, in case of disputes. Also, the remedies for misuse or infringement of a well-known trademark are also plenty. This includes a total ban on the use of the trademark in all classes and ambits of goods and services, a right to request for removal of the infringing trademark, and punitive damages in case of legal suits. Punitive damages are granted apart from the compensatory damages that one is naturally entitled to.
Trans border Reputation
Transborder Reputation of Trademark is a novel concept that the Indian Trademark Act takes into consideration. Section 11(9) of the Trademark Act talks about the same where it puts out the conditions not required for well-known trademark registration. This clears the air surrounding the need of Indian roots for a trademark and mandates the following as not a prerequisite condition:
- The use of the trademark in India.
- The registration of the trademark in India.
- The filing of the application for registration of the trademark in India.
- The reputation and registration of the trademark in any other jurisdiction, apart from India.
- The reputation of the trademark among the Indian public.
The KANGARO trademark of Kangaro Industries has been recognized as a well-known trademark in India, courtesy of the District Court of Central Jakarta, which determined the same. KIT KAT was granted the tag of a well-known trademark by the Intellectual Property Appellate Board based on the argument that it carried a trans-border reputation.
The latest two additions to the list of 95 well-known trademarks are Oral-B and Kesari, for reputation with reference to oral care products and travel and tourism services respectively, as observed by the Registrar. Recent legal developments in this regard include the Delhi High Court granting an interim injunction in favor of leading automobile manufacturer BMW, in a suit, it is contesting against DMW (Deshwar Motor Works). Earlier, the Bayerische Motoren Werke Ag had filed an application in the High Court of Delhi, requesting an order of restraint against the Defendant Om Balajee Automobile from using its registered, well-known trademark of BMW.
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