How to Obtain a Well-Known Trademark?
Introduction
It is anticipated that the number of trademark applications filed in India will escalate rapidly, with over 350,000 applications filed in 2019 alone. By 2025, it is estimated that the number will exceed 600,000 applications per year. The Trade Mark Rules 2017 established a novel method for designating a trademark as “well-known.”
Trademark holders can submit an application (TM-M form) to the Registrar to attain this status. A well-known trademark is granted exceptional protection against infringement and passing off. To be recognized as a well-known trademark, a trademark must possess a strong reputation not only domestically but also internationally and across borders.
What is a Well-Known Trademark
The Trademarks Act of 1999 defines a well-known trademark as a mark that has acquired recognition among a substantial segment of the public who utilize the goods or services connected with the mark.
Such recognition is so robust that utilizing the mark concerning other goods or services is probable to be perceived as an association between those goods or services and the individual who employs the mark with regard to the first-mentioned goods or services.
The criteria used to determine whether a trademark is well-known
In determining whether a trademark is a well-known trademark, the Registrar shall examine all pertinent facts that he deems significant, which may include the following considerations:
- The level of recognition of the trademark among the general public in India.
- The number of individuals involved in the distribution channels of goods or services related to the trademark.
- The number of existing or potential buyers of the goods or services associated with the trademark.
- The duration, extent, and geographical scope of the trademark’s use.
- The business community deals with the goods or services related to the trademark.
- The trademark’s enforcement record, precisely the extent to which it has been recognized as a well-known mark by any court or Registrar.