Introduction: Well known Trade mark is defined as a mark which becomes so famous in market that a person can easily identify it by their packaging, shape, logo, design, and color. For customer, well known Trademarks act as a measure by which one can identify which product or service they want to get benefitted from. Well known Trademark is beneficial for proprietor who have invested millions of money on research and development and in advertisement of there product to make it a well known mark. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation.
Well Known Trade Mark: Section 2(1)(zg) of the Trade marks Act, 199 defines “well-known trade mark”, . It means a Trade mark in relation to any goods or services 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.
The Indian Trademark Law compact extraordinary protection to Trade mark that is “well known’’ and safeguards them from malignance of infringement and passing off. The Trade mark to be well known Trade mark in India is recognized on basis of its cross border, international and national reputation.
Trade mark Act 1999 provides protection to well know Trademark at two levels:
- No mark can be registered if it has similarity to well known Trade mark.
- Action to be taken against misuse of well known Trade mark.
Is registration for well-known mark necessary in India?
In Trade mark Law 1999, special protection granted to well-known Trademarks includes:
The owner of a well-known but not yet registered Trademark may prevent others from registering Trademarks that are the same as, or similar to, the well-known Trade mark in identical or similar categories of goods or services;
- The owner of a well-known registered Trade mark may prevent others from registering Trademarks that are the same as, or similar to, the well-known Trademark in all categories of goods or services;
- The owner of a well-known registered Trade mark may prevent others from incorporating the well-known Trademark in the name of their enterprises;
- The owner of a well-known registered Trade mark is not restricted by the five-year time limit for bringing cancellation actions against Trademarks registered in bad faith, while such five-year time limit applies to ordinary Trademarks; and
- In infringement cases, courts or administrative bodies tend to grant larger awards to owners of well-known Trademarks, and subject infringers to more severe punishment.
Here it is not necessary for well known mark to be registered. A well known mark can have cross border, international or national reputation.
Registration of well known Trade mark in India:
However it is not necessary for well known Trademark to get registered but if proprietor wants to register then under the Recognition Rule, owners of Trademarks may apply to either the Trademark Office or Trademark Review and Adjudication Board (TRAB) for recognition of their Trademarks as well-known Trademarks when one of the following needs arises:
Contesting Registration of Identical or Similar Trademarks: If the owner of a well-known Trade mark discovers that another person or company has applied for registration of a trademark which is a reproduction, imitation or translation of its well-known Trademark, or is so similar to its well-known Trademark as to cause confusion, the owner of the well-known Trademark may contest the registration by submitting to the Trademark Office an application for recognition of its Trademark as well-known Trade mark.
Requesting TRAB to Cancel a Registered Trademark: If the owner of a well-known Trademark discovers that another person or company has registered a trademark which is a reproduction, imitation or translation of its well-known Trade mark, or is so similar to its well-known Trade mark as to cause confusion, the owner of the well-known Trade mark may request TRAB to cancel that person or company’s registration by submitting an application for recognition of its Trademark as a well-known Trade mark.
Requesting SAIC to Stop Unauthorized Use of Identical or Similar Trademarks: If the owner of a well-known Trademark discovers that another person or company is using a trademark which is a reproduction, imitation or translation of its well-known Trademark, or so similar to its Trademark as to cause confusion, the owner of the well-known Trademark may request SAIC at city or higher level (“Local SAIC”) to stop the use of the Trademark by submitting an application for recognition of its Trademark as a well-known Trade mark.
How to recognize Trade mark as well known Trade mark?
- The extent to which the Trade mark is known to the pertinent general public;
- The consecutive period of time during which the Trade mark has been used;
- The consecutive period of time during which promotion of the Trade mark has been conducted, and the extent and geographic boundaries of the promotion;
- Records showing that the Trade mark has received protection as a well-known Trade mark; and
- Other factors that may evidence that the Trademark is a well-known Trade mark.
- Methods, geographic areas and media channels for advertising and marketing activities, and volume of advertisement publicized.
- That the Trademark has been protected as a well-known Trade mark in China or in other countries or regions.
- The production volume, sales volume, sales revenue, taxes paid on profits, and sales regions, of the products bearing the Trade mark for the past three years.
WIPO on Well known Trademark:
Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks
And acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.
One should be aware of the fact that a number of Trade mark laws merely implement obligations under Article 16.3. Of the TRIPS Agreement and protect well-known registered Trademarks only under the following conditions:
- that the goods and services for which the other mark is used or is seeking protection are not identical with or similar to the goods for which the well-known mark acquired its reputation
- that the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and
- that his interests are likely to be damaged by such use.
Benefits to Well known Trademark:
Once a Trademark is acknowledged as well- known Trademark by a Registrar of Trademark; the Trade Mark Registry has limited under the law to not register any Trademark that is similar or identical. Once declared well-known it will be protected across all classes of goods and services. At the time of infringement proceeding, a well-known Trade mark can be emphasized against infringer even if who is infringing is dealing in entirely different products or services. For example, in recent case Delhi, the high court declared Louboutin as a well-known Trade mark in India similarly Google was declared a well-known Trade mark which means that no one can use the term Google commercially and if done so would lead to infringement proceedings against him. Therefore, the consequences of being declared a ‘well known’ Trade mark are remarkable and would open up colossal opportunities for the company and the entrepreneur.
Drawbacks of Well-known Trade Mark:
Under the Trade mark Rules, it is not clear whether registration for a well-known mark is restricted to a specific class of goods or services, as the form does not provide for an option to restrict or identify such an application for registration. This runs contrary to the definition of ‘trademark’ under the Trademarks Act, which limits the protection of a mark to specific goods or services in relation to which it is used.
Further, there are no definitive guidelines or thresholds provided to enable the Trade mark registry to uniformly decide, among other things, what would amount to adequate use of the mark so as to ascertain whether a mark is well known.
The concept of well-known Trademarks has been accepted worldwide by lawmakers and is enacted in the Indian law; however, this special protection that has been provided to well-known Trademarks is still comparatively unknown in Trade mark registration services, including infringers who rely on the fact that territorial nature of Trade mark can easily help them get away from the said infringement penalties. Protection of Well known Trademarks by the New Act is in recognition of the more modern concepts of Trade mark protection. Though the Indian Courts were actively protecting well known Trademarks, Statutory protection is a step in the right direction.
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