Pursuant to several ease of doing business initiatives of the Government of India, the Department of Industrial Policy and Promotion on 6 March 2017 notified the Trade Mark Rules, 2017 (Rules) thereby repealing the erstwhile Trade Mark Rules, 2002. While making the filing procedure for new trade marks simpler by, inter-alia, reducing the total number of forms, the Rules have also provided for a new procedure for determination of well-known trade marks in India.
Prior to the Rules, trade marks were regarded as well-known in India only if a court of law or the Intellectual Property Appellate Board (IPAB) had so declared them. While the Trade Marks Registry (Registry) maintains a register of well-known trade marks, only such trade marks declared as well-known by a court of law or the IPAB were set-out therein. The procedure set-out under the Rules eliminates the cumbersome requirement to have a trade mark declared as well-known through legal proceedings, and makes it relatively much simpler.
The Rules are likely to help protect international well-known brands in India from conflicting trade marks as once a trade mark is declared as well-known, the protection will be afforded to such a trade mark across all goods and services irrespective of its actual use.
The Rules set-out the following procedure to determine a trade mark as well-known:
• A request in the prescribed form (i.e. Form TM- M) must be filed in the Registry accompanied by a statement of case and all supporting evidence and documents relied by the applicant in support of such a claim. This should be accompanied with the prescribed fees of INR 100,000 (Indian Rupees one hundred thousand);
• Prior to determining a trade mark as well-known, the trade mark registrar (Registrar) may invite objections from the general public to be filed within 30 (thirty) days from the date of invitation of such objections;
• In case the trade mark is determined as well-known, it will be published in the trade mark journal and shall be included in the list of well-known trade marks maintained by the Registrar;
• In the event it is found that a trade mark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trade marks, the Registrar may at any time remove from the list any such trade marks, after providing due opportunity of hearing to the concerned party.
• The Registrar shall, inter-alia, consider the following factors laid down in the Trade Marks Act, 1999 (Act) to determine whether a trade mark is well-known:
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use or promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iii) the duration and geographical area of any registration of or any application for registration of that trade mark to the extent they reflect the use or recognition of the trade mark;
(iv) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognized as a well-known trade mark by any court or trade mark registrar under that record;
(v) the number of actual or potential consumers of the goods or services;
(vi) the number of persons involved in the channels of distribution of the goods or services; and
(vii) the business circles dealing with the goods or services, to which the trade mark applies.
• Additionally, the Act lays down that the Registrar should not consider the following factors as a condition to determine whether a trade mark is well-known:
(i) that the trade mark has been used or registered or is well-known to the public at large in India;
(ii) that the application for registration of the trade mark has been filed in India; and
(iii) the trade mark is well-known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India.
The full text of the Rules may be accessed at the following link:
http://dipp.nic.in/English/acts_rules/Rules/trademark_amendment_rule_2017.pdf