India is increasing and evolving and so too are its laws and procedures regarding the exercise of rights related to trademarks and well-known trademarks. Ensuring a higher level of protection and granting the opportunity to directly apply to register a trademark as “well-known” could guarantee a stronger shield from counterfeit products and consequently improves the ease of doing business in India. Considering DP’s interest and participation in the Indian market and its laws, taking a look to examine the well-known registration system can be useful.
Before any other further observation, it is important to understand the concept of a well-known trademark, as originally reported in the Trademark Act, 1999, which has been subsequently followed by the Trademark Rules, 2017: a well-known trademark is “a trademark which has become so to the substantial segment of the public which uses such goods or receives, to the extent 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”. Besides the definition, there are several indexes that may be taken into account when an application is submitted, such as the knowledge and recognition of the mark in the relevant sections of the Indian public, the duration and geographical area and the extent of any use of the mark, the number of actual and potential consumers, the number of persons involved in the channels of distribution of the goods and services, etc.
In order to identify whether a trademark has been already recognized as “well-known”, it may be helpful to look at the rulings of the competent authorities, such as the High Court of India, the Intellectual Property Appellate Board and the Supreme Court. In fact, thanks to their decisions, approximately 80 trademarks have already been recognized as well-known,the list of which is available on the Governmental website (https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx).
However, after the promulgation of the Trademark Rules, 2017, the system has changed. As stated in Rule 124 of the Trademark Rules, 2017 any person may file an application online using Form TM-M, along with the relevant documents, including a statement supporting the application, contained in which are the specified reasons why the trademark should be considered as well-known (including annual sales turnover, advertisement and publicity, evidence of knowledge and recognition of the trademark in India and overseas, etc.) as well as fees.
Applying for the registration of well-known trademarks guarantees several advantages, moreover considering that the protection is extended regardless of the differences in the field of business, goods or services and since the trademark does not have to be necessarily used in India, this is beneficial to multinational companies for overall brand protection. Furthermore, the rule that allows the cancellation after five years and three months of non-use of the trademark in the territory of India is not applicable. Under the Trademark Rules, such application, once filed, is examined and published in the Trademark Journal. Upon publication, any person may file an objection with the registrar to oppose the inclusion of the mark as a well-known mark. If there are no objections or any objections are overruled, the mark will be included on the list of well-known trademarks.
In conclusion, any trade mark with the status of “well-known” substantially improves the extent of protection available to it, as it provides the owner ofthe brand, the exclusive right to the trademark against all unlawful users thereof. Those improvements will likely lead to a boost of confidence in the Indian market and in the IP’s protection system.
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