FAQ's on Well-Known Trade Marks

1)   Are well known marks protected in India?

Yes, well known marks are protected in India. There are specific provisions under the Trade Marks Act, 1999 and procedure to record well known trade marks in India is provided under the Trademarks Rules, 2017 enacted under the Act, 1999. Prior to March 2017 there was no procedure in place to record well known marks in India though they were protected under specific provision (Section 11(6)) of the Trade Marks Act.

2)   What is the procedure for determining a mark as a well-known trade mark?

As per the Trade Marks Rules, 2017, an application is required to be filed (online)at the Trade Marks Registry supported by evidence of use. The Trade Marks Registry, Mumbai reviews the application filed to verify the filing requirements. Thereafter, hearing is appointed at Mumbai Trade Marks Registry to present your case. If the hearing officer is convinced that the trade mark should be declared as a well-known trade mark, the trade mark is advertised in the Trademarks Journal (TMJ) inviting objections from the general public within 30 days from the date of publication in t he TMJ. If, no objections are received, the trade mark is advertised in the trade mark is advertised in the TMJ and included in the list of well-known marks.

3)   Are there any guidelines issued by Trade Marks Registry mentioning the evidence required to be filed along with the application?

As per the guidelines published by the Trade Marks Registry, the application for well-known mark must be accompanied with following documents:

1. Statement of Case describing applicant's rights in the trade mark
2. Evidence in support of the averments comprising of

• use of the trade mark;
• applications filed or registration obtained
• annual sales turnover of the applicant's business based on the subject trade mark duly corroborated;
• evidence regarding number of actual or potential customers of goods/services under the trade mark;
• evidence regarding publicity and advertisement of the trade mark and the expenses incurred,
• evidence as to knowledge or recognition of the trade mark in the relevant section of the public in India and abroad

iii.        Copy of favourable orders passed by Indian Court or Trade Marks Registry in India and if the trade mark has been recognized as a well-known trade mark by any Court or Indian TMO.

We may point out that Section 11(6) of the Trade Marks Act lists out the factors to be taken into account for determining a mark as a well-known trade mark, which are summarized below. Thus, the above guidelines follow the criteria laid down in the Trade Marks Act.

1. a)    knowledge or recognition about the trade mark in the relevant section of the public. i.e. number of actual and potential users of the products/services under the trade mark, number of persons involved in distribution channel etc.;
2. b)    the duration, extent and geographical area where the trade mark is used and promoted;
3. c)    details of registrations or applications for registrations of the trade mark;
4. d)    the record of successful enforcement of the rights in that trade mark including the record stating that the trade mark has been recognized as well known by any court or Registrar.

4)   How extensive evidence of use is required to be filed along with the well-known application?

The following documents are generally useful to enclose along with the affidavit/ statement of case:

(i)           Copy of board resolution/POA in favour of the authorized signatory;

(ii)          information/articles discussing the origin/history of the brand worldwide and date of use of the mark in India;

(iii)         list of application/registrations in India along with copies of few registration certificates;

(iv)         details of oldest active registration anywhere in the world;

(v)          annual worldwide and India specific sales figures of goods/services rendered under the trade mark for the last 10 years;

(vi)         copy of invoices issued in India to customers mentioning the trade mark for the past 8-10 years (2-3 invoices per year will suffice);

(vii)        annual worldwide and India advertisement/sale promotional expenses incurred towards the trademark in India for the past 6-8 years;

(viii)       copy of advertisements published in India and worldwide in newspapers/magazines or any other media for the past 6-8 years.

(ix)         copy of favourable court orders passed by Courts, Tribunals or UDRP/INDRP domain name proceedings. 2-3 orders will suffice;

(x)          extracts from 3rd party websites, news articles, extracts from social media websites establishing use and reputation of the mark in India;

(xi)         copy of decisions declaring the trademark to be well-known/famous in India other jurisdictions of the world;

(xii)        industry awards, accolades, brand rankings conferred on the brand over the years;

All the documents along with the evidence is needed to be submitted online, there is a restriction that total file size of the documents should not exceed 5 MB.

5)   What are the benefits in obtaining a well-known mark?

The Trade Marks Act grants broader protection to well-known trademarks to prevent its misuse. The Trade Marks Act specifically imposes obligation on the Registrar to protect a well-known trade mark against the identical or similar trade marks. For instance, the owner of well-known mark can restrain 3rd parties from seeking registration or using identical or deceptively similar trade marks even in relation to different goods or services. Further, the Trade Marks Registry may take well known status into account when examining application of third parties for an identical or similar mark.

6)   Are there any significant roadblocks in the procedure for determining a mark as a well known trade mark?

We do not foresee any significant concerns. However, there is a backlog at the Trade Marks Registry. Currently, all hearings to adjudicate well-known applications are listed at Mumbai Trade Marks Registry. Further there is a long queue of well-known petitions pending before Mumbai Trade Marks Registry. It is likely to take at least 18-24 months for the trade mark to be recorded as well-known, calculated from the filing date.

7)   How many trade marks have been declared as well-known trade marks?

As of September 2019, 155 applications have been filed and the Trade Marks Registry has accepted eight applications. The brand owners have shown keen interest in seeking well-known mark status for their brand.