Have you ever asked the shopkeeper for a bottle of BISLERI rather than just a water bottle?
Have you ever wanted a pair of PUMA shoes instead of just any local brand?
Trademarks play a vital role for small and big businesses across the globe, serving a unique identity to the products and services of the business. It often happens when we hear a name and a certain image, sound or tagline pops up in our mind. This is the capability of a well-known trademark which has an influential impact on the minds of the consumer due to its brand recognition and consumer loyalty and what ultimately drives us to ask for a specific bottle of Bisleri over some local brand, or wish for a pair of Puma shoes.Though these trademarks have acquired distinctiveness as well as global reputation in both national and international market, it has to follow certain procedure to get the status of being a well-known trademark. The status of well-known trademark is not granted based on mere unfounded hearsay. This is the reason we have popularly know some trademarks like WIPRO, Cadbury, Parle G etc. which are not blanketed with the extra layer of protection.
Well, what really is a well-known trademark? Well-known Trademark, in general terms, means the trademark which is very popularly among the consumer and have an extraordinary reputation in the market. According to the Section 2(1)(zg) of the Trademarks Act, 1999, a well-known trademark is one that has gained adequate amount of recognition among a significant percentage of the public who have shown clear preference for the goods & services of any one particular trademark over that of another to such an extent that using such a mark in relation to even other categories of goods & services would indicate a connection between the two as both being the same and being under the ambit of the same owner.
2. WHAT IS A TRADEMARK?
A Trade Mark is a sign used by a
person to identify and distinguish
its goods or services from those of
others.
3. WHAT IS A WELL-KNOWN TRADEMARK?
Well-known marks are also known as Famous
mark, that is widely recognized by their
customers.
It is a mark that has attained prominence in
public
no other service or goods provider can use
such marks.
4. A WELL-KNOWN TRADEMARK.
A well-known trademark is protected across all
classes of goods or services and across
geographical locations.
Even if your company's trademark is for a
different class of goods or services than the
well-known mark is for, you will still not be
allowed to use it.
5. SOME OF THE WELL-KNOWN MARKS.
TATA HONDA MC DONALD’S
BISLERI GOOGLE TACO BELL
6. 3 MAJOR REASONS BEHIND PROTECTION OF THE MARKS
.
To prevent unfair use of a mark’s
reputation
Prevents confusion in consumers
Prevents causing harm to the
reputation of a mark.
7. RECOGNIZING A WELL-KNOWN TRADEMARK.
The duration, extent, and geographical area of any,
A record of successful enforcement of IP rights regarding the mark.
The commercial value of the mark.
The awareness and popularity of the mark.
Use of the mark. Promotion of the mark.
Registrations or any applications
for registration of the mark.
8. REGISTERING A WELL-KNOWN TRADEMARK.
A statement of case mentioning the
claimant’s rights on the trademark.
A copy of the successful
enforcement or judgment is to be
furnished in case of a registered
trademark.
Evidence or supporting documents,
•use of the trademark
•registration certificate
•annual turnover
•publicity and advertisement
•knowledge and reputation of the trademark.
9. STATUTORY PROVISIONS OF A WELL-KNOWN TRADEMARK.
Section 2 (1) (zg) of The Trade Marks Act 1999-
Defines the term ‘Well-known Trade-Mark’.
Section 11 (2) of The Trade Marks Act 1999-
Provides protection and recognition of a Well-known Trademark.
Section 11 (6)- 11 (9) of the Trade Marks Act 1999-
Provides the criteria for determining a Well-Known Trademark.
10. PROCEDURE FOR REGISTRATION
Any person may
give an
application in
Form TM-M and
make payment of
fee as mentioned
Filing should be
done by e-filing on
the official
website of
trademark,
www.ipindia.nic.in
The Registrar shall,
take in to account
the provisions of
sub section (6) to
(9) of section 11.
He may call for
such documents as
he thinks fit.
Registrar may
invite objections
from the general
public to be filed
within thirty days
from the date of
invitation of such
objection.
Lastly shall be
published in the
trademark
Journal and
included in the
list of well-known
trademarks
maintained by
the Registrar.
