In the current era of fierce competition on the global market, "well-known trademarks" aid in identifying a sign or symbol for a particular brand in international markets in order to preserve their good name and the trust of their customers. The owner of a registered trademark invests a significant sum of money to have their brands recognized as well-known and to have a noticeable, strong consumer base in the eyes of the relevant legal authorities.
The owner wants to establish their brand name as a "well-known trademark" in order to prevent intentional opportunists from copying it in relation to their goods and services, in addition to protecting it from malicious infringers. A trademark becomes recognized as "well known" not on the date of registration but rather on the date that it becomes widely known.
What are well-known trademarks?
A well-known mark, logo, or symbol that embodies a company's well-earned goodwill and reputation is called a well-known trademark. A trademark can gain notoriety based on the following factors:
The level of recognition it gets in the industry;
how long it has been recognized;
how much of it is recognized geographically; and
how much value is attached to it.
Several well-known brands, including "Bajaj, Bisleri, Horlicks, Infosys, Intel, and Amul," are acknowledged as well-known trademarks in India.
According to Section 2(1)(zg) of the Trademarks Act, 1999, a well-known trademark is one that has become sufficiently well-known among the general public among those who use the goods or services; it represents that the use of the mark in connection with other goods or services is likely to be interpreted as indicating a relationship between the parties involved.
The Trade Mark Rules of 2017 have been revised to include a new procedure that allows the Registrar to designate a particular brand as "well-known." A trademark owner may request that their mark be designated as "well-known" by submitting a Form TM-M application to the Registrar in compliance with the new regulation.
What is the significance of a well-known trademark?
A well-known trademark is significant because it provides its owners with significant financial benefits. A trademark is violated by registration and unapproved use of such a trademark. The brand's reputation is harmed when such a mark is used without authorization because it confuses customers about the product's quality. It is illegal to imitate a trademark in this way.
A trademark infringement case arises, for instance, when a clothing manufacturer uses a well-known trademark for which it is not the original owner.
Anybody can designate their mark as a well-known trademark by submitting Form TM-M and the required fee, according to Rule 124 of the Trademark Rules of 2017. The applicant must provide a statement and supporting documentation to back up his claim.
The Trademark Act's Section 11(6) addresses the provision of factors to be taken into account prior to determining whether a trademark is well-known. In 1999, WIPO adopted a joint resolution regarding the protection of well-known trademarks in order to safeguard the marks from malicious intent and infringement.
The Trademark Act's Section 11(7) states that the registrar must consider three factors when determining whether a trademark is known or recognized in the relevant section for the purposes outlined in Subsection (6):
the number of actual or potential customers of the goods and services;
the quantity of people engaged in the system of distribution channels; and
the business circle that deals with the goods and services to which the trademark will apply.
The Trademark Act's Section 11(9) addresses the conditions that are not necessary to determine whether a trademark is well-known. These prerequisites are mentioned below:
The trademark has been utilised in India.
A Trademark has been registered.
In India, a trademark registration application has been filed;
It has been registered and is well-known in other countries besides India.
that a sizable portion of the Indian population is familiar with the trademark.
Based on the aforementioned considerations, it can be concluded that both Indian trademark registration and widespread public recognition are not prerequisites for the registration of well-known trademarks. The clause guarantees the trademark's reputation across international borders.
The Trademark Act's Section 11(10) addresses the registrar's responsibilities. The registrar is responsible for safeguarding the well-known trademark when making decisions regarding opposition applications made for identical trademark registrations. When rendering a decision in a dispute, the registrar will consider the opponent's malicious intent and motive.
The owner of the well-known and highly recognized trademark Rolex for watches was the plaintiff in Rolex S.A. v. Alex Jewellery Pvt. Ltd. (2009). Under the Rolex brand, the defendants ran a business that sold knockoff jewelry. The Delhi High Court applied Section 2(1)'s definition of a well-known trade mark to determine that the public segment that uses Rolex watches that fall into a particular price range is very likely to believe that jewelry bearing the trademark Rolex has some connection to the plaintiff (zg).
The Delhi High Court determined that, despite the plaintiff's substantial sales and aggressive advertising, there was no need to establish a meaningful duration of sales in Indian Shaving Product Ltd. v. Gift Pack (1998), popularly known as the Duracell Ultra case.
To sum up, well-known trademarks are essential for preserving a company's goodwill and reputation in the international marketplace. The status of a trademark as "well-known" shields its owners from unauthorized use and imitations while also bringing substantial financial benefits. A well-known trademark is defined by a number of criteria, including industry recognition, length of recognition, geographic recognition, and attached value. The Trademark Act and Trade Mark Rules, along with their registration procedure, guarantee the safeguarding of well-known trademarks against malevolent intent and infringement on a national and worldwide scale.
