A widely accepted and used name is generally considered as well known in regular parlance of term. Under the trademark context, it is believed that “well-known” trademark was legally defined for the first time in Paris Convention of Industrial Property. Examples of well-known trademarks includes “Starbucks”, “Addidas”and so on.
Well-known trademark, in the Indian context is elaborated as follows……
In relation to any goods or services, means a mark 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 provides protection of trademarks that are well known. Indian IP offices identify well-know trademark in India on the basis of their national and international reputation. Section 2(1)zg states well-know trademark. The year 2017 amendment in the Indian Trademark rule has given power to the registrar to declare a trademark as a well-known trademark under rule 124.
Pre-requisites for establishing a mark to be well-known trademark:
1. The trademark should be well known among the people using those services or goods or by the promotional activities are done by them
2. The duration for which the trademark is being used in the market place or in any geographical area
3. The number of actual consumers of goods and services
4. The business circles dealing with that goods and services to which the trademark applies.
Determination of Well Known Trademark by Registrar (Rule 124):
Application to be made in form TM-M requesting the Registrar for well-known trademark
Payment to be made as per First schedule
Application to be accompanied with statement of case alongwith evidences and supporting documents relied by the applicant in the support of his claims
Registrar shall consider various sections and cross verify all documents before determining a trademark to be a well-known mark
Registrar will also invite objections from third party. This objection has to be filed within 30 days from the date of such invitation
Post the trademark gets recognition as a well-know trademark, the same is published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar
The Registrar, may at any time, if it is found that a trademark has been erroneously or inadvertently or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing the opportunity of hearing to the concerned party.
Advantages of well-known trademark:
No other trademarks which are similar or identical will get registered thereafter
Will be protected across all goods or services
During infringement proceedings, a well-known trademark can be emphasized against infringer even if who is infringing is dealing in entirely different products or services
Their are remarkable benefits of well-known trademarks.
We, at Makhija and Associates have specialized legal team to assist in all the arenas of well-known trademark filing. We provide the required consultation in order to file application for the determination of a well-known trademark.
A preliminary and thorough investigation is carried out to ascertain the possibility of determination of well-known trademark. We make the clients aware about the possibilities of determining well-know or not determining even before the application for well-know is made at the trademark registry.
For more details contact us on 25324718 or mail us at email@example.com . Visit us at www.makhijaandassociates.com.