How can one acquire the status of Well-known trademark in India
Well-known trademarks are the result of the substantial and widely used mark. The recognition, usage, goodwill, and reputation, including other aspects, are the governing criteria for a mark to obtain Well-known trademark status.
Well-known trademark enjoys a special status. Once you start your business, it becomes crucial to opt for trademark registration to safeguard your brand. A mark becomes Well-known trademark relying on the following;
- Persistent and long-standing use of the mark.
- Geographical area and extent of the use of the mark.
- Grade of recognition, a mark has been obtained.
- Reputational and goodwill extent linked with the mark.
- Mark’s existence among the substantial portion of the public.
- Value linked with the mark.
- Other concerning factors and circumstances.
Earlier Well-known trademarks were safeguarded under the common law. And the concept of a well-known/acclaimed trademark was functional on judicial precedents and pronouncements. That’s why, trademarks act, 1999, statutorily acknowledged and explicated Well-known trademark under section 2(1) (zg). Also, rule 124 of the trademark rules, 2017 empowers the Registrar to decide a mark as Well-known trademark after the due procedure as given below.
According to data available on the official website of IP, 97 trademarks are recognized as Well-known trademarks. Most of them are concerned with search engines like Google and online services, other cosmetic and toiletry products, and services related to media and entertainment and are identical to us.
According to section 2(1) (zg) of the act, Well-known trademark is a mark that has become so to the substantial portion of the public that uses such products and services that use such mark in comparison to other products and services would be likely to be considered as indicating a connection in the course of trade or providing services betwixt goods and services and an individual using the mark is related to the first-mentioned goods or services.
It works on the following criteria;
- A mark (A) that has become Well-known among the substantial portion of the public that uses such goods or services (electronic goods) and;
- If the said mark A is used concerning other goods or services (IT goods) by any other individual, then it is likely to be considered as indicating a connection betwixt other goods or services (IT goods) and first stated goods and services (electronic goods) for such person who are identical of using such goods or services (electronic goods) under the mark A.
The definition mentioned above clarifies that it is used concerning particular products, and a substantial portion of the public uses the said products. Any individual using the said mark concerning other products, in such scenario there are chances or likelihood of indication of a connection betwixt other products and the first-mentioned goods or services.
It is crucial to remember that the other products might or might not be identical or similar to the first-mentioned products. It enables broader protection to Well-known trademark owners by limiting other individuals to use the Well-known trademark for different products.
The process to determine the Well-known trademark.
Rule 124 of the trademark rules, 2017, mandates criteria to explicate a mark as Well-known trademark by trademarks’ Registrar. The process is given below;
- Any individual can apply in the form TM-M along with a stated fee of Rs. 1 lac for the determination of Well-known trademark.
- The application in the form TM-M is to be fixed by a statement of the case, and the applicant gives all the proofs and documents to support the claim.
- While determining Well-known trademark, Registrar should take into account the provisions of section 11(6) to 11(9) of the trademarks act, 1999.
- Before determining the trademark, the Registrar might invite the public’s opposition to be submitted within one month from the date of such invitation.
- A mark is determined as Well-known trademark; then the Registrar should publish it in detail in the trademark journal and include the said trademark in the Well-known trademark list.
- Registrar might, at any time, finds any error in trademark or inadvertently included which demands you the trademark objection reply. If no longer justified in the list of Well-known trademarks, they remove the same from the list after offering the due chance of hearing to the concerned party.
To streamline the application process for Well-known trademark before the Registrar of trademarks, a public notice bearing no. CG office/TMR/ Well-known TM-335 dated on 22nd of May, 2017 was released by controller general, patent, design and trademarks.
Advantages of acquiring the status of Well-known trademark.
- It is associated with the owner and can be used by him/her.
- Prerogative to the owner against all unlawful users.
- Safeguard against frivolous and false litigation.
- Better recognition compared to registered trademarks.
- The Registrar of trademarks is limited to enable the registration of an identical mark or similar to the Well-known trademark.
- They are safeguarded across all classes of goods and services through the said Well-known trademark is not used for all classes of goods and services.
- All the legal processes for the owner of Well-known trademark can always claim and rely on the point that he/she is the owner of it and enjoys the better right over it than others.
- Other advantages provided by the courts in India.
Only the process mentioned above will not suffice; you will have to create an innovative and developmental mark that can be distinguished from the others.