Anirudh Arora

rd
23 January, 2017.
WELL KNOWN TRADEMARKS UNDER TRADEMARK ACT, 1999.

Section 2(zg): A well known trademark in relation to any goods/services, means a mark which has
become so to the substantial segment of the public which uses such goods or receives such services
that the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first mentioned goods or service.

Effect

The registration of a mark as a well-known mark gives it the right to supersede the following
absolute grounds of refusal enumerated under Section 9(1) of the Act;

a) Distinctive character and capability to distinguish goods/services from one source to

another
b) Mark designating kind, quality, quantity, quality, intended purpose, values, geographical
origin or time of production of goods/ rendering of services or other characteristics of the
good/service, served in trade
c) Marks which have become customary in current language or in the bona fide or established
practices of the trade.

The registration of a mark as a well known mark additionally gives it the exclusive right to prohibit
registration of other marks which are either similar/identical while being used for goods/services
that might not be similar or fall under the same class of goods or services, to the extent that the later
mark is detrimental to the distinctive character or repute of the earlier trade or would take
unfair advantage of it. This amounts to Relative Grounds of Refusal to registration provided
under Section 11.

WELL KNOWN TARDEMARKS UNDER DRAFT RULES

The Department of Industrial Policy and Promotion (DIPP) released a draft of the proposed new
Trademark rules under Draft Trademark (Amendment) Rules, 2015, which are open to public
comment until December 19, 2016. The proposed fees for filing and other proceedings have been
proposed to be increased by 100 % with the exception of filing a collective mark & notice of
opposition.

Effect

(i) As per the draft Rules, a right holder will be able to make a request to the Registrar of
Trade Marks to determine a trademark as a “well-known” mark. The request will need to
be supported with a statement of case and evidence. The official fee for filing such
 request has been fixed at INR 1, 00,000 (approx. USD 1500) for E-filing and INR
1,10,000 for physical filing. This is provided in Entry no. 80 of Schedule 1.
(ii) To incentivize electronic filing of trademark applications, the Draft Rules provide for
levying of an additional 10% fee if the trademark application or other document is
filed physically i.e., over the counter at any of the branches of the Trade Marks
Registry. While online filing is convenient, and once the Draft Rules are implemented it
will be cheaper, the Registry must make concessions in cases where the
applicants/registered proprietors are forced to file physical documents due to technical
snags with the Registry’s server and also shortcoming in certain cases where online
transactions are not possible.
(iii) Rule 44(b)(iii) stipulates that a Notice of Opposition with respect to an earlier
trademark or right, which is claimed to be a well-known mark needs to contain an
indication to that effect and an indication of the country or countries in which the
earlier mark is recognized to be well-known. Further, Rule 44(b)(vi) states that in such
cases, the goods/services based on which the opposition is made against the applicant
should also be mentioned, along with all the other goods/services that use the well-
known mark.
(iv) The sequence of Application forms provided by the Registry has been proposed to be
changed as well. Instead of the earlier numeric sequence, alphabetical sequence has been
proposed to be used. Well-known marks are to be filed under the application form TM-
M, along with which the fee is to be deposited as per the list in Schedule 1.
(v) Discretion of the Registrar, under Rule 127 encompasses the sole ability to determine a
well-known trademark, to which no supplanting criteria has been mentioned under the
said rules. Further, it includes the power to ask for any other such document as
he/she deems necessary for determination. Lastly, the Registrar has the power to
remove any Well-known trademark from the list if he/she considers it to be
inadvertently or erroneously registered.

CRITICAL OPINION

Dealing with Excessive Power conferred upon the Registrar

The Trademarks Act, 1999 already recognizes the concept of “Well-Known Trade Marks” and the
criteria are critically defined under sub-sections (6), (7), (8) and (9) of Section 11. However, it
appears that the proposed Rule 127 can surpass the Trade Marks Act, 1999 by conferring the power
upon the Registrar to stipulate the criteria for determination of the well-known status of a trade
mark. The Rule confers upon the Registrar wide discretionary powers to list as well as to delist the
trademarks from the list of well-known trademarks, which might have uncertain implications on
the rights and interests of various stakeholders. Without proper guidelines and criteria for
recognizing the trademarks as well-known, the rule gives a considerable amount of wide
discretionary powers to the Registrar to define the criteria in arriving at a decision of listing or even
delisting the trademark arbitrarily from the list of well-known trademarks.
It is, therefore, recommended that suitable guidelines, procedures and criteria should be drafted
in advance which needs to be followed and implemented by the Registrar. This would give certainty
and uniformity to the procedure of recognition of trademarks as ‘well-known’. It is also
recommend that once a trademark is included in the list of well-known trademarks, then the
delisting should be accompanied by a written order of registrar with proper justification and
valid reasons. To follow the principle of natural justice, an opportunity of being heard should
also be given by the Registrar to the owner of well-known trademarks before arriving at the final
written order. It is also recommended that the rule should include a proper objection or
opposition procedure for well-known trademarks which could be used by any affected party which
is willing to object the application or the status of a listed well-known trademark.

Dealing with the Fee surge for application filing

Almost all the applicable fees have been increased by hundred percent in the proposed rules starting
from filing of the trademark application and to the renewing of the trademark. After the rules will
come into force, the trademark registration procedure will cost almost double as much as it costs
currently, which appears to be on the higher side and needs to be reconsidered and reduced. It is
also proposed that there should be a different fee structure for different categories of applicants
viz. Natural person, small entity (MSMEs) and large organizations.