INTRODUCTION
Well known trademarks are those marks that have attained special reputation over consistentuse and are granted nation-wide protection across categories of goods and services. Unlike other trademarks, Well-known trademarks are not limited to a certain range of products or geographical area thereby strengthening the IP Protection against malicious infringers. It is after a plethora of precedents and judicial pronouncements that well known trademarks have been awarded this extra-ordinary protection. Form TM-M is to be filed by the proprietor of a trademark for requesting to declare a mark as well-known trademark. That being said, it is not mandatory for a mark to be registered to be declared as a well-known mark according to provisions of the Trademark Act.
FORMS & FEES
| Forms | Purpose | Government Fee(INR) |
|---|---|---|
| TM M | Request to include trademark in the list of Well-Known Trademarks | 100000 |
DOCUMENTS/ INFORMATION REQUIRED
1) Statement of case
2) Details of successful enforcement of rights in case the trademark has been recognised as well-known by the court in India or TM Registrar.
3) Copy of judgment of any court or the Registrar wherein the trademark has been recognised as well-known.
4) Evidences showing the claimant's right and justifying his claim. Such evidences shall include data/documents showing:
- Use of trademark, or any application filed for registration of trademark, or registration obtained;
- Annual sale turnover of the claimant’s venture;
- Actual or potential number of customers under the said trademark;
- Publicity and advertisement of the said trademark along with the expenses incurred thereof;
- Knowledge or recognition of the trademark in relevant section of public across the globe.
FAQS
A Well Known trademark in accordance with The Trademark Act, 1999 is "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."
Yes, well known trademarks have been granted legal protection under Indian laws. The Trademark Rules, 2017 specifically provides for procedure to record well known trade- marks. Even though prior to March 2017 there was no such procedure in place to record well known marks, such marks were still specifically protected under provisions of the Trademark Act, 1999.
Following determining factors are considered while deciding whether a trademark is well-known or not:-
- Knowledge of the trademark in relevant sections of the public;
- the duration, extent and geographical area in which the trademark is used, advertised and promoted;
- registration or application for registration of the trademark to the extent they reflect the use or recognition of the trade mark;
- the record affirming the recognition of the trademark as well known by any court or Registrar.
As provided in the Trade Marks Rules, 2017, the proprietor is required to fill an application (online) at the Trade Marks Registry along with evidence of use. The Trade Marks Registry thereafter reviews the application post which, the party involved is summoned for a hearing and the hearing officer declares the mark as a well-known trade mark, if convinced. The trade mark is then published in the Trademarks Journal for third parties to file objections within a stipulated window of 30 days from the date of such advertisement in the Journal. On receipt of no objections, the trade mark gets listed as a well-known mark.
The legal protection awarded to well-known trademarks is wider in ambit to prevent misuse. For instance, the proprietor of a well-known mark can restrain third parties from registering or making use of identical or confusing trademarks even if they belong to a different class of goods or services. Additionally, the Trade Marks Registry takes into consideration the status awarded to a well-known trademark while examining application of third parties for a similar mark.
No there are no such concerns when it comes to recording of a mark as a well-known trademark. However, owing to the backlog at the Trade Marks Registry the time taken for a well-known mark to be recorded may extend to 18-24 months.
A list of a total of 97 well-known trademarks registered in India are available on the official IP India web portal. The list can be accessed here :-
https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx
Yes, there are international conventions that grant protection to unregistered well-known trademarks as well. This protection is granted against identical and/or similar goods and services. Some of these conventions is the Paris Convention as well as the TRIPS Agreement.
1) Statement of case
2) Details of successful enforcement of rights in case the trademark has been recognised as well-known by the court in India or TM Registrar.
3) Copy of judgment of any court or the Registrar wherein the trademark has been recognised as well-known.
4) Evidences showing the claimant's right and justifying his claim. Such evidences shall include data/documents showing-
- Use of trademark, or any application filed for registration of trademark, or registration obtained.
- Annual sale turnover of the claimant’s venture.
- Actual or potential number of customers under the said trademark.
- Publicity and advertisement of the said trademark along with the expenses incurred thereof.
- Knowledge or recognition of the trademark in relevant section of public across the globe.
Yes, there are certain remedies available to the proprietor of a well-known trademark that he may choose to use in case of misuse of his IP.
- Prevention of registration of confusing, similar or identical trademarks in respect to all class of goods and services.
- Demand withdrawal of infringing trademark.
- Prevention of the incorporation of infringing trademark in the name or design of any business or corporate.
- Punitive Damages