What is a well-known trademark?
A well-known trademark is a famous mark, logo, or symbol representing a brand and its hard-earned goodwill and reputation. A trademark becomes a well-known mark depending on the following:
The degree of recognition it receives in the relevant sector;
The duration of recognition;
The extent & geographical area of recognition; and
The value associated with it.
E.g., Coca-Cola, Pepsi, McDonald’s, Domino, etc., are popular brands that qualify as well-known trademarks.
In India, some of the familiar brands such as “Bajaj, Bisleri, Honda, Horlicks, Infosys, Intel, Pizza Hut, Amul” are recognized as well known trademarks in India.
This link provides a brief list of well known trademarks in India.
Section 2(1) (zg) of the Trade Marks Act, 1999 provides the statutory definition of a well-known mark;
“well-known trademark” concerning any goods or services means a mark that has become so to the substantial segment of the public which uses such goods or receives such services that the use of such a mark about 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 concerning the first-mentioned goods or services.
The statutory definition states that if:
A substantial segment of the population uses the goods and services recognize a trademark represented by the brand; and
The public perceives the trademark used by anybody concerning other goods or services as belonging to the proprietor of the mark.
The trademark qualifies as a well-known trademark.
Why is a well-known mark significant?
The importance of a well-known trademark lies in the fact that they bring substantial commercial value to the trademark owners. Registration and unauthorized use of such a trademark is an infringement of the trademark. The unauthorized use of such a mark creates confusion about the quality of the product among consumers, damaging the brand’s reputation. Illegitimate imitation of trademarks is a punishable offense.
For example, if a garment manufacturer uses a well-known trademark for which the company is not the original owner, it is a trademark infringement case.
Protection of well-known trademarks:
a) It protects from registration of the brand by a third party;
b) Protection from misuse of the trademark.
A trademark is necessary for maintaining the goodwill and reputation of a company, and therefore trademark registration is essential. With the Madrid Protocol in place, registering a trademark is easier in the international scenario. Registration protects well-known marks against infringement and dilution (i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others).
Case Study for Well-Known Trademark Infringement
In Kamal Trading Co. vs. Gillette UK Limited (1998 IPLR 135), an injunction was sought against the defendants for using the mark 7’O Clock on their toothbrushes. The Bombay High Court held that the plaintiff had acquired an extensive reputation worldwide, including in India, by using the mark 7’O Clock on razors and shaving creams; as such, it was a well-known mark. Using an identical mark by the defendant would lead to the customer being deceived. As such, the defendant was prohibited from using the mark.
How to list your mark as well-known?
The list includes 97 marks listed as well-known on the IP India website. Earlier, the scenario was that the proprietor of a famous trademark could only establish his mark as well known by judicial proceedings before a court. But after the recent change in the Trade Mark Rules, 2017, the ‘Ease of doing business in India’ and ‘Startup India’ initiatives have been promoted. As a result, now a proprietor of a famous mark can directly apply online to the Registrar of Trademarks for the inclusion of his mark into the list of well-known trademarks.
The new rules also mention the conditions and the requirements which need to follow by the owners of the marks to declare their marks as well-known.
Rule 124 of the Trademark Rules 2017 mentions that any person may apply Form TM-M along with the prescribed fee to designate its mark as a well-known trademark. The applicant must support his claim with a statement and supporting documents.
The Registrar shall also consider the provisions of Sections 11(6) to 11(9) of the Act when such an application is submitted to him. It essentially provides that while determining a mark as a well-known trademark, the Trade Marks Registrar has to take into account any fact that he considers relevant for determining a brand a well-known trademark; these are:
a. the knowledge or recognition of the trademark in the relevant section of the public, including proficiency in India of the mark;
b. the duration, extent, and geographical area of any use of the such trademark;
c. the duration, extent, and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibitions of the goods or services to which the trademark applies
d. the duration and geographical area of any registration of or any application for registration of that trademark under the Act to the extent they reflect the use or recognition of the trademark;
e. The record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar underRegistrarord.
The Registrar is at liberty to invite objections from the public before declaring the said mark as a well-known trademark. If there are no such objections, the mark shall be advertised in the Trademark Journal and become part of the well-known trademark list. The fee for making such an application is INR 100,000, and such an application has to be filed online.
Section 11(9) states that a mark doesn’t need to be registered or application pending in India or have a usage in India to be declared a well-known trademark. Similarly, per the same clause, it is not even mandatory that a mark to be considered a well-known trademark has to be popular and well-recognized by the public in India.
Summary of the process:
i. Form TM-M: it is necessary to provide an application number for the subject trademark to be declared well-known, even though there are radio buttons to mention if your mark is registered with the Trademark Registry or not, which, in such a case, would imply that the provisions laid down in Section 11(9) might be redundant and it would not be possible to get your mark a well-known trademark status unless an application is filed in India.
ii. Fee of INR 100,000
iii. An application should be accompanied by evidence of the use of the trademark over a long period.
iv. Other documents that support its claims that the mark has a unique reputation in the minds of the consumers. It should be presented at the time of application filing.
v. The Registrar, after receiving the application, can give relative grounds for refusal of registration, and/or he may also call for further documents/evidence to conclude whether the mark is a well-known trademark.
vi. The Registrar, before declaring a mark as a well-known trademark, would invite objections from the general public. Publication in Journal – Once the trademark is declared a well-known trademark, it will be published in the journal.
vii. The Registrar shall include a well-known mark in the list of well-known trademarks maintained by the Registrar.
viii. Registrar, if found to be erroneously included in the list and not justified, may even be removed after providing an opportunity to the party for a personal hearing adhering to the principles of natural justice.
It is highly prudent that a trademark having brand value, reputation, and goodwill in India should get itself included in the list of well-known trademarks to safeguard itself from potential future infringements and claim benefits as provided to other well–known trademarks.
