Well-known Trademark
Any work created using a fall of a person under the broad category of intellectual property, which mainly includes patents, trademarks, and copyright. Intellectual property (IP) typically falls into two main categories: industrial property and copyright. Rule 124 of the Trademark Rules of 2017 established a new process that enables a trademark owner to complete the application form TM-M and request that the brand be considered well-known. Prior to 2017, only a judicial case could create well-known trademarks. Well-known trademarks receive protection across the nation and across categories of goods and services, in contrast to other trademarks that restrict their goodwill and reputation to a certain geographic area and range of items. It is against the law for the Trademark Registry to register “Google” as a trademark, even if the service is unrelated to the Internet industry.
Overview of Well-known Trademark
The public generally understands a well-known trademark as a mark associated with a well-known business or brand. Compared to regularly registered marks, these trademarks—often referred to as “famous” trademarks—enjoy a greater level of protection under the Trademark Act. For example, a well-known trademark enjoys protection across all classes of goods or services and across all geographical locations, whereas a regular registered trademark is only protected within the specific class of goods or services to which it belongs as well as only within the specific geographical location where it is registered. This implies that you cannot use your company’s trademark in conjunction with a well-known mark or a specific class of goods or services.
Examples of Well-known Trademarks in India
- Tata
- Apple
- McDonald’s
- Amazon
- Coca-Cola
- Nike
Why Should I Register as a Well-Known Trademark?
When a trademark is already so well-known, well-respected, and has been in use for a long time (prior usage) in India or during the world, you might be wondering whether registration is necessary. Although its extensive reputation and previous use may protect a well-known trademark, registering a mark as such offers undeniable advantages. The Trademarks Registry includes a registered well-known trademark in its list of well-known marks, offering the following advantages:
- It can now contest the registration of a third party’s deceptively similar mark without having to prove its identity.
- By law, the Registrar of Trademarks is required to reject applications for marks that are confusingly similar to well-known trademarks.
- Prioritizing the well-known trademark’s interests is crucial when attempting to defend a mark that is identical or confusingly similar.
- Other than the original owner of the well-known trademark, no applicant may attempt to register a confusingly similar mark with the trademark registration in any class.
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.
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 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.
