An owner of a well-known trade mark can now shout it from the rooftops; so to speak. Answering unspoken prayers, a public notice was issued on May 22, 2017 elucidating a list of guidelines to be followed for determination of a well-known trade mark by the Registrar which, if followed ensures that a trade mark owner can ‘declare’ his/her trademark to be well-known in India. The commercial implications of such declaration and status is tremendous. Before delving into the nitty gritties, a brief background would be in order.

The past 

The Trade Marks Registry has a list of well-known trade marks on its website. A well-known trademark is a popular mark which is well recognized by the public; for example HONDA, HORLICKS etc. This post on well-known trademarks will give you a brief idea.

The famed ‘hit’ list, first published in January 2011, is every brand owner’s quest. Prior to this list, which was available on the official website, one would have had to scour through several decisions handed down by the Supreme Court of India, the various High Courts, the Intellectual Property Appellate Board and the Trade Marks Registry. Since then, this list kept getting updated as and when a trademark was declared ‘well-known’ during opposition, rectification or infringement proceedings.

Rather frustrating, I might add, because one would have had to wait for an opposition, rectification or infringement proceeding to prompt an adjudication on whether the trade mark is well- known. Brand owners saw the clouds part when the Controller of Patents, Designs and Trademarks published a draft of the Trademark Amendment Rules in 2015 which introduced a provision empowering the Registrar to review an application to recognize a trademark as a well-known trademark. We have already covered the Amendments here.

The proposed amendments were published with a notice seeking comments from the public. At long last the Trade Marks Rules, 2017 (‘the amended Rules”) were passed which introduced the provision for determination of well-known trademark by Registrar vide Rule 124.

The present 

Succinctly put, Rule 124 states that one can apply for the status for well-known in Form TM-M (further information on the forms as per the amendment has been covered here). However, the rule evidently did not provide any procedure, criteria and guidelines required for determination of a well-known mark and was rather vague in its basic instructions.

To resolve this, the Controller has now issued a public notice which provides procedural guidelines for filing application for determination of a well-known trademark by the Registrar under rule 124; which brings us to the main focus of this article.

The skim on the Public Notice 

The public notice entails general guidelines regarding application, essential documents and general procedure.

Application

Application under Rule 124 should be filed in Form TM-M with a prescribed fee as per the first schedule (INR 100,000) to the Rules. It must be filed online through comprehensive e-filing services on the official website www.ipindia.nic.in.

The size of the documents attached as evidence should be in PDF format with resolution of 200 x 100 dpi on A4 size papers and should not exceed 10 MB

Documents to be attached

The application should contain the following documents

  • Statement of case describing Applicant rights and claim that their mark is well-known
  • Evidence to support the same – this would include documents regarding usage, application for registration or registration obtained if any, annual sales turnover, actual or potential customers, publicity reach, advertisement and expenses incurred for the same, evidence pointing to the recognition or knowledge of applicant mark in the relevant section of the public in India and abroad.
  • Evidence to support successful enforcement of rights i.e. whether any Court in India or Registrar have recognized the mark as well-known, copy of the judgments etc.

Procedure 

After you painstakingly upload your application with these documents, on receipt of the same, the office will consider the claim and may publish the details of the mark proposed to be included. People who wish to object may file his objection in writing to the Registrar stating reasons for objection and evidence supporting the same.

The applicants will be notified within stipulated time and there is, I suppose, a hearing (which has not been mentioned) after which the decision shall be communicated to concerned parties.

If the mark is worthy enough to get in, the same will be notified in the Trade Marks Journal and the official website.

Comments

A number of interesting debates have been circulating amongst the IP circles, one of them regarding the constitutionality of Rule 124. The Trade Marks Act, 1999 does not delegate power to the central government to create a procedure to recognize and declare well known trademarks. Moreover, Rule 124 goes against Section 11 which elucidates the procedure for recognition of a well-known trade mark.  However, it can be argued that Section 157 of the Act, which confers certain powers on the Central Government also has a provision (xli) which states that the CG may recommend rules on “any other matter which is required or may be prescribed” gives the new rules a clean slate.

Another, more worrisome issue is the amount of arbitrary power the Trade Mark Registry would now hold. A corrupt or biased decision by the Trade Mark Registry would ensure that an infringing mark clears a space for itself on the list. A third issue is that there is no explicit mention of a hearing in the provision inviting objections in Rule 124. Lastly the procedure clearly states that the evidence for the well-known status may include ‘applications for registration or registration obtained if any’. However, while filing, it is clear that an existing application number has to be specified – either registered or pending. So, if you’d like for a mark to be considered well known, you can’t file a new application as a well-known mark but rather an existing one has to be included which blatantly goes against section 11(9) of the Act.  All said and done this is a welcome move for most by the Central Govt. and we’re eagerly waiting to see how this pans out.

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