Well-known trademark is recognised as a mark which has attained the special status among the prominent section of the public, and if any other service or goods provider uses such marks, it would be considered an indication that the product is associated with the later service provider and hence would amount to trademark infringement.
Any trademark which is declared to be a well-known mark in India by the court of law or by the registrar of the trademark makes it compulsory for trademark registry to protect the well-known mark against any conflicting marks, business names or any domain names.
Recognition of marks as well-known mark departs the basic objective of registering a trademark; as trademark registry is given directions not to register any mark which is similar or identical to the well-known trademark.
In India, the process for attaining the status of the well-known trademark has also been made easier for the trademark owner with the recent amendments that were made in the trademark act and with the new set of rules introduced in 2017.
The application for the well-known trademark can be made under rule 124 with form TM-M, along with the prescribed fee. Protection for a well-known trademark can be done through the court proceedings.
The government Fees for filing an application of Well-known trademark is Rs.10, 000 and should be done along with the documents mentioned on the IP India website.
Applicant should also take into consideration the provisions of Trademark Act 1999. Section 11(6) and 11(9) of the trademark act, which states that when the application is submitted to the registrar, they consider following aspects for determining whether the mark supports the claim which was presented to them or not.
The competent authority in India will determine whether the mark is a well-known mark or not. Following circumstances should be taken into consideration while inferring whether the mark is or is not well-known.
The geographical area of promotion or recognition of the mark. The promotion can include fairs and exhibition of the goods and services which are associated to the mark.
The time of application of the registration of the mark
The duration extent and geographical area of any use of the mark in India.
Recognition of the trademark among the relevant public.
The value which is associated with the trademark.
These factors must be taken into consideration by the competent authority while determining whether the mark is a well-known mark or not.
The factors listed above have to be taken into consideration before determining whether the mark is a well-known mark or not. The difficulty arises because while determining, the registration office some time take into consideration all the factors while in another case they take certain factors and leave the rest.
Unregistered well-known trademark in India is protected on the basis the basis of common law principle of passing off. This right under this principle can be enforced by proving used and reputation of the mark.
The principle of passing off states that no individual or company should be allowed to sell products under the impression that the products are their while using the mark of another company.
The trademark office has published the list. Almost 81 marks have been listed as well-known-mark on Intellectual Property India website.
Many countries protect a trademark that is well-known irrespective of the fact that they are registered or unregistered. This protection is provided as per the international obligation.
A well-known trademark was first illustrated in article 6 (bis) of Paris convention for the protection of industrial property.
The Paris convention conciliates the party countries to implement this provision which prohibits the use of the mark which is an identical or similar reproduction of the mark which is registered or has attained the status of the famous mark.
Trade-related aspects of Intellectual Property Rights merely creates an obligation on the party countries to protect well-known trademark if they complete the following conditions
The use of mark should indicate the connection between these goods and the owner of the well-known trademark.
The trademark which the proprietor seeks to attain protection as a well-known trademark is not identical or similar.
The proprietor will also have to show that the trademark if any other similar trademark is registered it is likely to damage his interest in the market.
Well-known trademarks are protected in India on the condition that they attain protection from the controller of trademarks or the court. Amendment in the trademark act has also actively protected these trademark.