Companies can now “Apply” to register their Brand as “Well-known Trademark”
The new Trademark Rules have come into force on 6th March 2017¬ owing to the exponentially increasing number of trademark applications in the country. One of the most notable, as well as exceptionally priced amendments, is enumerated under Rule 124 of these new rules that have completely transmuted the procedure for the registration of a Well-Known Trademark.
About Well-Known Trademark:
The term “Well-known Trademark” has been defined in the Trademarks Act, 1999 and refers to 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.
Previously, a trademark could be declared Well-known by either instituting a civil suit for infringement/ passing off the dispute in the Court or by the Trademark Office by the virtue of Opposition/ rectification proceedings, or by IPAB by a cancellation proceeding or appeal. But, under this new provision, i.e. under Rule No. 124 of the new Trademark Rules, 2017, any person can now apply to the Trademark Registry in Form TM-M to entail their Trademark in the list of Well-Known Trademarks by paying an elevated official government fee of Rs.1,00,000 and withal corroborating documents such as their sales figures, advertisement and promotional details, etc., and other evidence establishing their claim thereof. Subsequent to this, the Registrar of Trademarks may invite time barred objections from general public opposing such an application.
The Registrar is reposed with the power to call for additional evidence if he deems fit for the determination of a Trademark as Well-Known. The process shall be concluded by the publication of the Well-Known Trademark in the Trademark Journal. The Courts have been chary in declaring a trademark as Well-Known as the same confers tremendous legal power on these marks. The government should be equally heedful to prevent its nocuous effect of being too lenient. Furthermore, upon discovery of inadvertent or erroneous inclusion of a trademark in the list of Well Known Trademarks, the Registrar may revoke such inclusion after giving due opportunity to be heard to the concerned party.
Objections regarding the constitutional validity of the mark have also been raised. It is contended that Rules are delegated legislature and obtain their legality from the parent statute which is the Trademarks Act, 1999 for the Trademark Rules, 2017. Since section 157 of the Trademarks Act, 1999 is silent upon the subject of Well Known Trademarks; it is controvertible that the Central Government can beget an entirely new procedure for the determination of Well Known Trademarks.
Benefits of getting recognition as a well-known mark:
Any Trademark with the status of a “well-known” substantially improves the extent of protection available to it, as it provides the right holder of the Trademark, the exclusive right to the Trademark against all unlawful users thereof, regardless of the differences in the field of business, goods or services. To make action successful, it is required to be established that the adoption of the brand by the unauthorised users is mollified and without the authority of the rightful owner/ proprietor of the mark. In short, the well-known marks are protected not only for goods and services related to those with which it is already associated but for non-competing goods and services.
Hence, the new Trademark Rules, 2017 is a boon, especially for the foreign brands as they can now get themselves recognised by the Trademark Registry as ‘Well- known’, as compared to their situation earlier, where they had to win a legal suit and wait for the Court to declare it as a well-known brand.