Trademarks are important parts of branding, and businesses need to use them. Images, names, or words that make a product or service stand out from others are called trademarks. These are legally protected. Trademarks are ruled by the Trademarks Act of 1999, which protects owners who obtained marks legally. In this publication, we are going to tell you everything you want to know about well-known marks in India.
What are Well-Known Trademarks?
To be a well-known brand, Section 2(1)(zg) of the Trademarks Act, 1999 says that it has become well-known enough among the people. Generally, among those who use the goods or services, it indicates that the use of the mark in connection with other goods or services is likely to be taken as showing a link between the parties involved.
Traditionally, trademarks and other business names serve to both assure customers and other partners of a certain standard and to identify the commercial origin of goods and services. The purchase of exclusive rights to trade names and marks has become more important for any player looking to create a powerful commercial brand and fight on a global scale.
Standards for Classifying Well-Known Trademarks
Factors Considered for Determination
The Act explains specific factors that the Registrar considers when establishing the status of a well-known brand, including:
- Knowledge and recognition of the mark in the appropriate part of the public.
- Duration, scope, and geographical area of use and marketing of the mark.
- Record of successful protection of rights in the mark.
- Number of real or possible customers, people in delivery routes, and business groups connected with the goods or services.
Process of Recognition
To classify a brand as well-known, an application must be made with the Registrar along with the required papers and proof. The Registrar analyses the claim based on the given information, including the mark’s background, acceptance, and regulation. The registration process includes a fee and submitting a statement of case outlining the mark’s uniqueness and acceptance.
Infringement and Passing off of Well-Known Trademarks
Infringement:
Definition: When someone makes use of an approved brand without permission and causes misunderstanding among customers about the source of goods or services, it is called infringement.
Legal Basis: under India, trademark infringement is handled under Section 29 of the Trademark Act of 1999, which stresses that using a recognised name without permission may be considered infringement.
Redress: In legal cases, infringement remedies include asking for the surrender of infringing works for destruction, claiming profits or damages, and obtaining injunctions to halt unauthorised use.
Passing Off:
Definition: Passing off is a method of protecting the trust attached to unlicensed trademarks by avoiding illegal usage that might lead to mistakes or damage the image of the trademark owner.
Legal Basis: Proving trickery and loss coming from illegal use are the primary objectives of passing off a common law relief that does not need brand registration.
The following are some possible remedies for passing off: asking the surrender of infringing items, requesting reparations for losses suffered as a result of passing off, and obtaining injunctions to prevent unauthorised use.
Principal Advantages of a Well-Known Brand
1. Recall and Recognition of the Brand
A well-known trademark is of enormous importance in recall and brand recognition. Building a unique brand personality aids businesses in sticking out in competitive markets and encourages client loyalty. In real places as well as online, buyers may quickly notice and remember a well-known name, making it easier to look for certain goods or services.
2. Defence of Laws
Trademarks that are well-known provide a strong legal defence against infringement by other companies. Trademark laws protect these marks, giving exclusive use rights in relation to certain products or services. Cases pertaining to trademark infringement may be brought against companies that violate a well-known brand.
3. A Higher Market Value for the Company
A well-known trademark significantly raises the total worth of a firm by representing its goodwill and reputation. Using licensing agreements, other companies may pay for the right to use the trademark in connection with their goods or services, so leveraging this amplification in value. Furthermore, a well-known trademark may increase a company’s attraction to investors. Aiming for steady growth, investors are more attracted to companies with strong, recognisable brands because they see higher potential returns.
4. An Edge over Competitors
Businesses may stand out from the competition and position themselves as industry stars by using a well-known brand as a strong competitive edge. One of the main benefits of having a well-known brand is its uniqueness, which encourages client loyalty since people choose familiar and trustworthy businesses over less obvious ones.
5. Opportunities for Partnerships
Well-known trademarks may provide doors to beneficial joint ventures. To profit from the kindness and image of a well-known brand, other companies may show interest in working with it. These partnerships might improve the company’s market penetration and open up new growth possibilities.
6. A Rise in Client Confidence
The ability of a well-known trademark to act as a catalyst for the development of strong consumer trust is one of its main advantages. It represents a strong brand with a reputation for dependability and quality. Repeat business and greater levels of client loyalty are fostered by this trust.
7. Improved Client Relations
A well-known brand enhances the experience for customers. Consumers prefer to associate with a well-known brand favourably, which fosters a feeling of comfort and familiarity. This level of familiarity improves the whole customer experience and leads to the development of long-lasting connections with customers.
An overview of the registration procedure
- Form TM-M: Although there are radio buttons to indicate whether your mark is registered with the Trademark Registry or not, you must provide an application number in order for the subject trademark to be declared well-known. If this were not the case, the provisions outlined in Section 11(9) might be redundant, and you would not be able to obtain a well-known trademark status unless an application was filed in India.
- A 100,000 INR fee
- Documentation showing a prolonged history of trademark usage must be included with an application.
- Additional documentation supporting the company’s assertions that the mark has a distinctive reputation among customers. It has to be sent at the moment the application is submitted.
- After receiving the application, the Registrar may determine whether the mark is a well-known trademark by requesting more documentation or proof, or he may provide relevant reasons for refusing registration.
- The Registrar would seek public objections before designating a mark as a well-known trademark.
- The Registrar must add an established trademark to the catalogue of well-known trademarks that the Registrar maintains up to date.
- The Registrar may even be removed after giving the party a chance for a personal hearing that follows the natural justice standards if it is determined that the Registrar was mistakenly added to the list and was not justified.
A trademark with trust, image, and value to consumers in India should seek to be kept to the list of well-known trademarks in order to safeguard itself against future violations and to be qualified for privileges that are given to other well-known trademarks.
Some well-known trademarks in India include:
- AIWA for electronic goods
- BAJAJ for electrical products
- BATA & BATA FOAM for footwear
- BENZ for automobiles
- BISLERI for bottled mineral water
- CARREFOUR for various products
- CARTIER for jewellery, watches, perfumes, etc
- CATERPILLAR for various products[1]
- Castrol for lubricants
- Kalpataru for real estate
- Infosys for IT services
- Nirma for household detergents
- Biocon for science and drugs.
- Mahindra & Mahindra for cars and more.
In summary
The creation of a company’s image and brand knowledge rests greatly on its trademarks. It helps create income in addition to building brand value. The Well-Known brand was seen by trademark owners as the goal that everyone would strive to achieve, but only a chosen few could achieve. The number of well-known brands has grown from 78 to 117 in only two years, with the Delhi High Court having approved 45 of them.
The first problem was resolved with the establishment of the Trade Mark Rules. It is possible that many applications for well-known trademarks are being submitted. Because no one else is permitted to use a Trademark that is even somewhat similar to one that has been registered as a well-known Trademark, the Registrar must use caution while assessing these applications.
