TM Rules 2017 determination of Well-Known Trademark

, , , , Environmentdevaskic

Determining Indian Well-Known marks status seems like a conflict against international IP policies. In Indian Trademark Registry, well-known marks were publicly listed  in the website. But, they were only based on the Court Judgement, supported by  the extract of sentences  containing “well-known mark” references/quote.

Now, as the new TM Rules 2017 have come with a procedure/rule for determining a Well-Known Trademark , my interpretation leads to following requirements and conditions.

Requirements

  • TM-M form to be used.
  • Only E-filing
  • Fees applicable 100,000/per mark.
  • TM registration is not compulsory. If not registered, logo and documents are required.
  • Statement of case (No format is disclosed as of now for “Statement of case”. As such it could mean a claim, particulars of claim )
  • Evidence, and Documents.  Document uploads are mandatory. (As of today 08/03/2017, upload documents function in the TM registry website is crashing)

Conditions

  • Section 11 and subsection (6), (7), (8), (9) of the Act should be satisfied.
  • Registrar Decides.
  • Registrar may invite objection from public. – Would give 30 Days to file Objections. ( Not clear, whether it is paper advertisement or TM website or Journal)
  • Has to publish it in Trademark Journal.
  • Once registered, it shall be registered in list of well-known trademarks.
  • Registrar can remove any time from the list, if found erroneous, inadvertent,
  • Hearing would be given before removal.

* As such , the rules are not clear about the kind of documents required to establish the well-known mark status.

* It says, Registrar would publish it before the public for Objection. and 30 days Objection period. But it is not sure, how it would be published to public? Whether dedicated webpage to list the applications that are received or through a Journal!!! As such publishing it in Journal is specified in the Rule. It is unclear through when it is published in Journal.

In my opinion, I wonder, obtaining the well-known mark status may give more and more loads of work to Agents.

However, it is also predictable that, it would be years, by the time well-known mark is listed in the website. Again, the registrar branches may follow, different processes and speed.

Thanks
Devarajan G
Advocate & IP Attorney.

 

Note : Section 11 of the Act. 

6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including-

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained

(ii) the as a result of promotion of the trade mark;duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(vi) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account-

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well known trade mark, any of the following, namely:-

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark-

(a) is well-known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India, or

(v) that the trade mark is well-known to the public at large in India.