In the times of nip and tuck global market competition, the well-known trademarks help to locate a sign or symbol for a particular brand in the market to maintain customer faith and reputation they have received. The owner of the registered trademark invests a considerable amount of money for the sake of identifying their brands as highly acclaimed and have their marked strong presence in the customer in the competent court of law. 

It is important to register a trademark in India before starting a business to protect the brand and avoid legal entanglement. The purpose behind doing so is to ensure that the brand name as well-known trademarks not only safeguard against infringers but also to restrict advertent opportunist person from copying the trademark name concerning their goods and services.

Concept of well-known trademarks.

It was first coined in the Paris Convention for protection of IP in 1883, where the topic was discussed without any concrete guidelines. Hence, it was left out on signatory members to choose their regulations for registration of trademarks. Article 6 of the convention rules the general principle of territoriality concerning trademark protection. This means trademark registration in one country does not offer the exclusive ownership of the same trademark in other ones. Under the said convention, the above obligation was only applied to goods with resembling name or similarity. Members were allowed to expand it for various goods.

Later, the term was discussed in trade-related aspects of IP rights (known as TRIPS) in 1995, where the standards to protect and enforcement of such trademark was formulated under article 16(2) and 16(3) of the agreement. Article 16(2) takes the single factor of being cognisant of the trademark in the relevant sector for the member countries to determine a well-known trademark whereas article 16(3) determines the provision when a trademark with a dissimilar name can be safeguarded. Such provisions include a) use the said trademark in various goods/services should indicate a link betwixt two goods and services and b) interest of the trademark owner is likely to be undermined by such use. All the signatory countries to the TRIPS agreement were bound to safeguard the acclaimed marks of an identical or dissimilar trademark with satisfying the aforementioned criteria.

Now, every country has its regulation pertaining to well-known trademarks.

In India ‘trademark’ means as per section 478 of the IPC, 1860 that was amended by the Indian merchandise marks act, 1889. Now, the term well-known trademark finds its place in section 2(ii)(zg) of the Indian trademarks act, 1999 as given below;

‘The mark that has become so to the considerable portion of the public that uses such goods/services such services that the use of such mark concerning other goods/services would potentially to be considered as indicating a link in the course of trade or rendering of services betwixt those goods or services and an individual using the mark pertaining the first-mentioned goods or services.’

Before the legislation came into place, the recognition of said trademark was over the courts and tribunals’ discretion, whether they considered the trademark as well-known or not. Nonetheless, it led the owner through a long way of contesting adversarial positions before the court of law. With the advent of apt legislation, the trademark owner can now directly approach the trademark registry to get their products/services recognised as a well-known trademark.

Provisions pertaining to well-known trademark.

In India, a well-known trademark is regulated and protected via existing trademark law, 1999 and the trademark rules of 2017. 

Rule 124 of the trademark rules, 2017.

It is the latest version of rules in India to register trademarks. It states the trademark owners to approach the trademark registry for the objective of recognizing the well-known trademark. Also, it mandates a criterion to determine a well-known trademark through a separate application. 

Trademark act, 1999.

To abide by the Paris Convention and TRIPS agreement, India enacted the first legislation named the trademarks act, 1999 and the rules of the trademark, 2002 that came into place in 2003. The trademark act of 1999, includes some of the crucial provisions pertaining to well-known trademarks;

Section 11(2) of the act mandates the guidelines to protect well-known trademarks. Section 11(6) deals with the provision of a factor considering before a determination of well-known trademarks. Section 11(7) states to determine whether the trademark is known or recognised in the relevant section for the objective given in subsection (6). Section 11(9) deals with prerequisites that are not needed for the determination of a well-known trademark. Section 11(10) deals with the registrar’s obligations.

Submission of a well-known trademark.

The latest rule of the trademark rules, 2017 offers that a person seeking registration of his/her well-known trademark can make an application before the registrar of trademark registry in proper format of ™, by paying an application fee of Rs. 1 lac. It has to be filed with required documents, evidence and statement of the case along with documents. Registrar while inspecting the application will take the factors given in section 11(6) and (9) into consideration. It has to be filed online via the E-submission service of the trademark registry.

Required documents. 

– Statement of the case under rule 124 of the trademark rules, 2017, the applicant is obliged to file a statement concerning claimant right over the trademark explaining trademark to be well-known.

– If the trademark is registered and recognised by the prominent court or the registrar then the enforcement details of such rights.

– Allocated registration copies by the registry or court.

– Essential documents as evidence showing claimant rights and enforcement of the well-known trademark. It might include annual transaction proof of trade, potential or actual number of customers under said trademark, promotion or ads of the said trademark, and trademark recognition in relevant sections of the public across the globe.

Certain remedies over misuse.

Section 27(2) of the trademark act puts prohibition over the use of identical or similar well-known trademarks in distinct or similar goods or services. There are many famous cases of trademark infringement where section 29 and 30 of the Act applies. It deals with the provision of remedy when there is an infringement.

In conclusion.

With increasing global brands in every section of goods or services, it becomes pertinent to safeguard such brand having global inter-connectivity. That’s why India must make the appropriate changes from time to time to protect the rights of well-known trademarks.