WELL-KNOWN TRADEMARKS IN INDIA:

 

The Indian trademark law protects well-known brands from the vices of passing off and infringement and grants them exceptional protection. Notable trademarks in India are recognized by the Indian Intellectual Property Office based on their reputation on a national, international, and cross-border reputation. These trademarks are often protected by intellectual property laws, which prevent others from using similar or identical marks that could cause confusion or dilute the brand’s value.

 

WELL-KNOWN MARK HAS BEEN DEFINED UNDER SECTION 2(1)(ZG):

 

 “A 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.”

 

LEGAL PROVISIONS PERTAINING TO INDIA WELL-KNOWN TRADEMARKS: 

The Trademarks Act of 1999 covers classic trademark provisions in Sections 11(2), 11(6), 11(8), 11(9), and 11(10). Let’s delve deeper into each provision:

Section 11(2): Protection of Well-Known Trademarks: 

Section 11(2) of the Trademarks Act, 1999, is a provision designed to protect well-established trademarks from solution and unfair advantage. It prevents the registration of a trademark that is identical or similar to an earlier well-known trademark, even if the goods or services associated with the new trademark are different from those of the earlier trademark, thereby protecting its distinctive character and preventing consumer confusion. Section 11(2) of the Indian Trademarks Act, 1999 provides for the protection of well-known trademarks across all classes of goods and services. This means that even if a particular trademark is registered in only one or a few classes, it can still be protected in all tm classes if it is considered to be a well-known trademark.

Example:

“Apple” is a well-known trademark for electronics, a new trademark “Appley” for unrelated goods like clothing could be refused registration under Section 11(2) if it is likely to take unfair advantage of or be detrimental to the distinctive character or repute of the “Apple” trademark.

Section 11(6): Factors to consider when determining the status of a well-known trademark:

Section 11(6) of the Indian Trademarks Act, 1999, outlines the criteria for determining a trademark’s well-known status in India. The Registrar of Trademarks considers factors such as public knowledge and recognition, the trademark’s usage duration, extent, and geographical reach, particularly through promotion, advertising, publicity, and exhibitions. The registration history and successful enforcement of rights, including court or Registrar recognition, are also crucial. Additionally, the trademark’s commercial value and market recognition are assessed.

 

Section 11(8): For registration purposes:

A trademark should be deemed well known if it has been previously recognized as such by a court or registrar in at least one relevant segment of the public.

 

SECTION 11(9): The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:

1. That the trademark has been used in India.
2. that the trademark has been registered.
3. that the application for registration of the trademark has been filed in India.
4. that the trademark:

(a). is well known in; or

(b). has been registered in; or

(c). in respect of which an application for registration has been filed in, any               jurisdiction other than India; or

(d). that the trademark is well-known to the public at large in India.

 

SECTION 11(10): Ensures protection against any harm to the reputation of well-known trademarks;

 

1. The registrar is required to defend the rights of well-known trademarks against similar ones in the event of a dispute or infringement. They must also take consideration and notice any malafide intention or Ulterior motive on the part of the complaint.

 

  PROCEDURE A WELL-KNOWN TRADEMARK:

 

As per rule 124 of the Trademark Rules, 2017, allows trademark owners to request the Registrar to declare their trademark as “well-known.” To do so, they must file Form TM-M, pay the prescribed fee, and provide evidence of the trademark’s reputation and recognition. The registrar assesses the application and may request additional information. If approved, the trademark gains enhanced protection, including wider scope and stronger enforcement rights. The list includes 281 marks listed as well-known on the IP India website link A trademark that has goodwill, reputation, and brand value in India should be added to the list of well-known trademarks to safeguard itself from potential future infringements and claim benefits as provided to other well–known trademarks. The following steps are involved in this process:

 

1. Filling an application:

 

These documents include a statement supporting the application, detailing the reasons for recognizing the trademark as well-known. 

 

1. Requirement documents:

 

• Application Form: Fill out Form TM-M, the official application for trademark registration.

 

• Proof of Use: Provide evidence showing the trademark is used in India, like advertisements and marketing materials.

 

• Public Recognition Evidence: Include documents that support the trademark’s recognition, such as market surveys, sales figures, and media coverage.

 

• Claimant’s Statement: A detailed statement explaining the trademark’s history and significance.

 

• Financial Data: Submit sales turnover and other relevant financial information to demonstrate the trademark’s presence in the market.

 

• Legal Documents: Provide any judgments or court orders related to the trademark’s enforcement or recognition.

These documents are crucial for proving the trademark’s reputation and ensuring its protection.

 

JUDGEMENT:

 

Tata SIA Airlines Ltd. vs. Union of India, W.P.(C)-IPD 64/2021. The Hon’ble Delhi High Court, in its dismissal of a writ petition filed by Tata SIA Airlines Limited, has clarified that even after a mark has been judicially recognized as “well-known,” its proprietor must still initiate a formal request under Rule 124 of the trademark’s rules, 2017, for its inclusion in the official register of well-known trademarks maintained by the trademarks Registry. The petition aimed to compel the Registrar of trademarks to include the “VISTARA” mark on this list, relying on Section 11(8) of the trademark Act, 2000.

                     The Court, however, emphasized the indispensability of adhering to the established procedural framework outlined in Rule 124. This process involves mandatory publication and subsequent inclusion of the mark on the register. Moreover, the Court deemed it inappropriate to intervene in the matter of the prescribed fee of INR 1,00,000, which is intended to cover the administrative costs associated with the Registrar’s duties in processing such requests.

 

CONCLUSION:

 

Well-known trademarks are a testament to the power of branding and the importance of protecting intellectual property. They represent a significant investment for businesses and play a crucial role in driving economic growth and innovation. By understanding the concept and legal framework surrounding well-known trademarks, businesses can better protect their valuable assets and safeguard their reputation in the marketplace. The trademark rules 2017 provide a strong legal provision to protect well-known trademarks. By simplifying the filing process and offering clear legal guidelines, this legislation empowers businesses to safeguard their brand identity and reputation. This, in turn, stimulates innovation and promotes the growth of national brands.