How Do I File a Well-known Trademark?

Intellectual property (IP) encompasses various rights designed to protect creators and innovators across various domains. Traditionally, IP is classified into two primary categories: industrial property and copyright. Industrial property includes patents, trademarks, industrial designs, and place of origin designations, while copyright laws govern works of art, music, literature, and the related rights of performers, phonogram makers, and broadcasters. These collective rights, collectively referred to as ‘intellectual property,’ confer exclusive privileges upon their holders. Understanding these rights, their protection, and how to leverage them is paramount.

Origins of Trademarks

The history of trademarks is deeply entwined with the evolution of commerce and human culture. Archaeological findings reveal the use of symbols and marks in ancient civilizations like Egypt, serving superstitious and religious purposes. In the Greek and Roman eras, ‘potter marks’ were employed to distinguish the creators of specific vessels. These historical antecedents laid the groundwork for the modern concept of trademarks, representing a distinctive mark or symbol that can be exclusively owned.

Well-known Trademarks

Section 2(1)(zg) of the Trademarks Act, 1999 defines a well-known trademark in India. It identifies such a mark as one that has garnered substantial recognition among a significant portion of the public who utilize goods or services associated with the mark. Using a well-known mark concerning other goods or services will likely imply a connection between those goods or services and the entity using the mark for the former.

Protecting Well-Known Trademarks In India

The process of determining whether a trademark attains ‘well-known’ status can involve the High Court of India, the Intellectual Property Appellate Board, or the Supreme Court of India. Nevertheless, recent developments in the Trademark Rules, 2017 have streamlined the process. Rule 124 of these rules permits any interested party to apply online by completing Form TM-M and submitting requisite documents, including a statement supporting the application’s grounds for well-known status. Unlike less-known trademarks, well-known trademarks enjoy nationwide and cross-category protection, rendering them a valuable asset for businesses.

Online Trademark Registration Procedure

The process of registering a trademark in India is a meticulous one:

1. Search for a Unique Brand Name: Conduct a comprehensive online search to ensure your chosen brand name is distinctive and not already in use. Unique and memorable names are preferable.
2. Prepare Your Trademark Application: Gather essential documents, including evidence of trademark usage, applications or registrations, annual sales turnover, customer base, and advertising expenses.
3. Submit Your Application: Submit your application either manually or electronically (Form TM-A). Electronic filing provides immediate online acknowledgement, while manual filing involves physical submission at a Trademark Registry office.
4. Application Review: The Registrar reviews your application to ensure it meets legal requirements and does not conflict with existing trademarks.
5. Publication in Trademark Journal: Upon approval, your trademark is published in the official Indian trademark journal, initiating a 90-day window for potential opposition.
6. Trademark Opposition: If any party opposes your trademark, a legal process ensues. If not, your application proceeds.
7. Trademark Opposition Hearing: In the event of a dispute, both parties present evidence, and a hearing is conducted. The Registrar makes the final decision regarding trademark registration.
8. Obtain Trademark Registration Certificate: If there is no opposition or after resolution, the Registrar issues a Trademark Registration Certificate, officially confirming the trademark’s registration.

Status of Application of Trademark

Upon application submission, an allocation number is provided to the applicant, enabling the tracking of the application’s status online. Trademark registration in India remains valid for ten years and can be renewed indefinitely. Additionally, it’s crucial to note that having a trademark in India does not grant any special rights outside the country.

Important Facts on Trademark Registration

Trademark registration stands as a pivotal asset for any business, serving as a distinct visual identifier encompassing elements such as words, names, numbers, labels, logos, or colour arrangements. The regulations governing trademarks and their registration are delineated under the Trademark Act 1999. The Controller General of Patents, Designs, and Trademarks, operating under the Ministry of Industry and Commerce, Government of India, is responsible for trademark registration in India.

Here are some vital aspects to consider concerning trademark registration:

• A Pictorial Representation: Trademarks encompass a wide variety of elements, including Word Marks, Service Marks, Logos, Symbols, Shapes of Goods, Series Marks, Collective Marks, Certification Marks, Geographical Indicators, Pattern Marks, Sound Marks, Colour Marks, and Three-Dimensional Marks.
• Intangible Assets: Trademarks function as intangible assets that can be sold, licensed, or transferred, significantly adding value to a business.
• Legal Shield Against Infringement: Trademark owners possess legal recourse against any infringement of their logo, brand, or related phrases. Unauthorized use can lead to legal action.
• Trademark Search: Conducting a trademark search is vital to ensure uniqueness. This search can be conducted through the official government database (Indian Trademark Registry) or via private companies offering such services.
• Selection of Class: India comprises 45 distinct industries, each designated as a ‘class.’ Trademarks must be filed under the appropriate class, with 34 related to products and 11 to services.
• Transparent and Clear Registration Requirements: While trademark registration is optional, it provides conclusive proof of ownership and benefits the registrant in legal proceedings.
• Credibility and Renewal: Trademarks remain valid for ten years and can be renewed indefinitely. However, it’s critical to initiate the renewal process one year before the trademark’s expiration. Failure to renew on time may lead to invalidation, with reinstatement possible by filing the necessary paperwork with the relevant trademark office.

Symbols Used in Trademarks

Various symbols within the realm of trademarks convey essential information about a brand’s status and protection, with significance for both trademark owners and consumers:

• Trade and Service (SM): This symbol indicates that a trademark registration application has been filed but is pending processing. While it serves as a warning to potential infringers, it lacks definitive legal significance until the application is authorized.
• The ‘R’ Symbol: Once a trademark application is granted, the registered trademark ‘R’ symbol can be used to showcase the brand’s legal recognition. A registered trademark implies that any unauthorized use of the mark is illegal and subject to legal consequences. While the use of the ‘R’ sign is optional, it offers protection in cases where counterfeiters use the mark without permission. This symbol shifts the burden of proof to the trademark owner, who must demonstrate that the infringer knowingly used the registered brand without authorization.
• The ‘C’ Symbol: The ‘C’ symbol is commonly employed to indicate that the owner of a creative work holds the copyright. This symbol is used for various creative works such as art, photographs, videos, books, and computer programs. It should be accompanied by the copyright holder’s name and the year of the work’s initial publication in the nation where it was copyrighted.

Remedies for Infringement of a Well-Known Trademark

In cases of trademark infringement, both civil and criminal remedies are available:

Civil Remedies:

• Interlocutory/Temporary/Ad-interim Injunction: This discretionary remedy restrains a party from taking action until a legal matter is resolved.
• Mareva Injunction: This injunction prevents a defendant from selling or transferring property until a trial concludes.
• Anton Piller Order: This order allows the plaintiff access to the defendant’s premises to inspect, make copies of, and secure relevant documents and infringing items.
• John Doe Order: These are search and seizure warrants issued by a court against unidentified defendants.
• Permanent/Perpetual Injunction: A permanent injunction prohibits a person from engaging in certain infringing acts indefinitely.
• Damages or Accounts of Profits: Compensation can be awarded to the plaintiff for losses due to the defendant’s actions. ‘Accounts of profits’ require the defendant to pay the plaintiff the profits earned through infringing conduct.
• Delivery Up and Destruction: Defendants may be required to destroy infringing items or surrender them to the plaintiff.

Criminal Remedies:

Infringements under the Act include activities such as manufacturing or possessing devices for forging trademarks and using fraudulent trade descriptions. These are considered ‘cognizable’ offences, allowing police to not only seize infringing products during raids but also apprehend those responsible. Sections 103 and 104 of the Act govern complaints for criminal remedies. The Magistrate Court serves as the venue for filing such complaints.

Statutory Provisions on Well-Known Trademarks in India

In India, the legal framework governing well-known trademarks is comprehensive and precise. These provisions aim to protect trademarks that have gained substantial recognition among the public and possess distinctive qualities. The statutory provisions and procedures for determining and safeguarding well-known trademarks are outlined below:

1. Rule 124, Trademark Rules, 2017

Under Rule 124 of the Trademark Rules, 2017, any individual can request the Registrar to determine a trademark as well known. To initiate this process, one must submit an application in Form TM-M and pay the specified fee according to the First Schedule. The application must be accompanied by a Statement of the case, along with all supporting evidence and documents.

The Registrar, during the process of determining a trademark as well known, takes into account the provisions of subsections (6) to (9) of section 11 of the Trademarks Act, 1999. Additionally, the Registrar may request any relevant documents deemed necessary for this determination.

Before declaring a trademark well known, the Registrar has the authority to invite objections from the general public within a thirty-day window from the date of such an invitation.

Once a trademark is officially recognized as well-known, it is published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar. However, if it is later found that a trademark was erroneously or inadvertently included or is no longer justified to be on the list, the Registrar may remove it, following a due opportunity of hearing for the concerned party.

2. Section 11(2) of the Trade Marks Act, 1999

Section 11(2) of the Trade Marks Act 1999 extends the scope of protection to well-known trademarks across all classes of goods and services. It states that a trademark identical or similar to an earlier trademark, registered for different goods or services by a different proprietor, cannot be registered if the earlier trademark is well known in India. The use of the later mark without due cause should not take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trademark.

3. Section 11(6) of the Trade Marks Act, 1999

When determining whether a trademark qualifies as well-known, the Registrar considers several factors mentioned in Section 11(6) of the Trade Marks Act, 1999. These factors include:

• The knowledge or recognition of the trademark in the relevant section of the public, including knowledge in India resulting from the promotion of the trademark.
• The duration, extent, and geographical area of any use of the trademark.
• The duration, extent, and geographical area of any promotion of the trademark, including advertising, publicity, and presentations at fairs or exhibitions.
• The duration and geographical area of any registration of the trademark under this Act, reflecting its use or recognition.
• The record of successful enforcement of the trademark’s rights, especially the extent to which it has been recognized as a well-known trademark by any court or Registrar.

4. Section 11(7) of the Trade Marks Act, 1999

For determining whether a trademark is known or recognized in a relevant section of the public, Section 11(7) of the Trade Marks Act, 1999, directs the Registrar to consider factors like the number of actual or potential consumers, the persons involved in the distribution channels, and the business circles dealing with the relevant goods or services.

5. Section 11(8) of the Trade Marks Act, 1999

If a trademark has already been determined as well known in at least one relevant section of the public in India by a court or Registrar, Section 11(8) of the Trade Marks Act, 1999, mandates the Registrar to consider it as a well-known trademark for registration under the Act.

6. Section 11(9) of the Trade Marks Act, 1999

Section 11(9) of the Trade Marks Act, 1999, specifies that the Registrar should not impose any of the following conditions when determining whether a trademark is well known:

• The trademark has been used in India.
• That the trademark has been registered.
• The application for registration has been filed in India.
• That the trademark is well known in or has been registered in any jurisdiction other than India.
• The trademark is well known to the public at large in India.

7. Section 11(10) of the Trade Marks Act, 1999

When considering an application for trademark registration and related opposition filings, Section 11(10) of the Trade Marks Act, 1999, mandates that the Registrar must:

• Protect a well-known trademark against identical or similar trademarks.
• Take into consideration any bad faith involved, either by the applicant or the opponent, that affects the rights related to the trademark.