Well Known Trademark

How to Make Your Mark Well-Known?

Section 11 of the Indian Trade Marks Act of 1999 outlines the requirements for registering a trademark as a Well-Known Trademark. Generally speaking, a trademark has to pass examination and satisfy the conditions listed in Section 11(6) of the Act after it becomes well known by the public. The following is a summary of these requirements:

• The trademark is familiar among relevant sections of society.
• What is the duration, scope, and location of trademark usage?
• How long, how widely, and where has the trademark been promoted, including through advertising, presentations at events, and exhibitions?
• The duration and location of the trademark’s registration or application under this Act, along with its usage and acknowledgment, are crucial details.
• A court or registrar may recognize the trademark as a well-known trademark, or it may have a history of successfully defending trademark rights.

However, a trademark doesn’t need to meet these requirements to be considered well-known:

• Evidence of prior use in India,
• An application for registration, or prior registration of the mark in India, is required.
• The trademark meets any of the prior requirements in a jurisdiction other than India.
• India’s general public is well aware of the mark.

These terms clearly state that any trademark may be used only within India’s territory and does not require previous registration or use. Any trademark that has gained this kind of notoriety through widespread usage outside of India and that has not applied for previous registrations through the Indian Registry is eligible to seek protection in India as a well-known trademark.

The Process of Obtaining a Well-Known Trademark

To be considered a well-known mark, a corporation need to demonstrate that the public generally recognizes the trademark for it to be considered a well-known mark. The process can be challenging as it needs a significant amount of evidence to validate the mark’s reputation. When deciding whether or not a mark is well-known, the following elements are considered:

• The mark’s usage includes its duration, extent, and geographic area.
• The promotion of the mark encompasses the duration, extent, and geographical area, which includes advertising, publicity, and showcasing the goods and/or services associated with the mark at fairs or exhibitions.
• Any mark registration or application must specify the duration, extent, and geographic area. Such registration or application must reflect the extent of use, as well as public recognition of the mark.
• The mark has a track record of effective IP rights protection, particularly in terms of recognition and familiarity with relevant enforcement authorities.
• The trademark has commercial value.

Summary

Industrial property and copyright are two categories of intellectual property (IP), which contain works like patents, trademarks, as well as copyrights. Trademark owners can now register their brands as well-known trademarks using Form TM-M, a status that was previously only attainable via legal proceedings, according to the introduction of Rule 124 in the Trademark Rules of 2017. Unlike conventional trademarks, which are restricted to specific geographic areas and goods or services, well-known trademarks receive nationwide protection across all categories. Some well-known brands are Coca-Cola, Google, and Tata. The benefits of registering a well-known trademark include instant protection against confusingly similar marks, and the prevention of unlawful use. For a trademark to be considered well-known, relevant social groups must acknowledge it and satisfy the requirements listed in Section 11 of the Indian Trademarks Act of 1999. There must be strong proof of the recognition and reputation of the trademark to complete the registration process.