Author- Preethika Vijaykumar
The Trademark Act (1999), defines a “well-known trademark” as a mark that has become widely recognized by the public in relation to certain goods or services. Such trademarks are protected across the country and across categories of goods and services, unlike other trademarks whose protection is limited to a specific geographic area and range of goods or services. The Trade Mark Registry is prohibited from registering any mark that is confusingly similar to a well-known trademark, such as Google, Yahoo, and Coca-Cola.
To determine whether a trademark is well-known, the registrar considers several factors, including the extent to which the trademark is recognized by the public, the duration and geographic area of its use and promotion, the record of successful enforcement of the rights in the trademark, and its trans-border recognition. The registrar also considers the number of actual or potential consumers, the number of persons involved in the distribution channels, and the business circles dealing with the goods or services to which the trademark applies when defining the relevant portion of the public.
Anyone may submit a request for a trademark to be deemed well-known by paying an official fee of INR 1,000,000 under Rule 124 of the Trade Marks Regulations, 2017.
Some of the well-known trademarks in India include 7 O’CLOCK for shaving razors owned by Gillette U.K. Ltd., England; ENFIELD BULLET owned by Enfield India Ltd.; AMUL owned by Kaira District Co-Operative Milk Producers Union Lld., known for its dairy products; MONGINIS for cakes, pastries, and other bakery products owned by Monginis Foods Private Limited; and NIVEA owned by Beiersdorf A.G., known for its personal care products. These trademarks not only identify a particular sort of goods or service but also serve to identify the source or the person.
According to Section 11(6), the registrar is required to the providence of the well-known trademark title to the marks, taking into consideration any circumstance that he deems significant for establishing whether a trademark is a well-known trademark, such as
- The awareness or familiarity of the trademark among the relevant segment of the public, including its recognition in India, that has been attained through promotional efforts should be considered.
- The duration, extent, and geographical area of any use of the trademark.
- When considering the promotion of a trademark, the duration, scope, and geographic reach of the advertising, publicity, and display at trade fairs or exhibitions related to the goods or services covered by the trademark should be taken into account.
- The duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark.
- The record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.
These factors are taken into consideration by the Registrar to determine whether a trademark is well-known or not. If a trademark is deemed to be well-known, it is given a higher level of protection under the law.
Section 11(7) mandates that the Registrar takes into account various factors while defining the applicable segment of the public. These factors include the number of current or prospective consumers of the goods or services, the number of individuals involved in the distribution channels of such goods or services, and the business communities dealing with the goods or services that are covered by the trademark.
As per Rule 124 of the Trade Marks Regulations, 2017, any individual can apply for a trademark to be recognized as well-known by submitting an official fee of INR 1,000,000.
Some of the Well-known trademarks in India are as mentioned below:
- 7 O’CLOCK for shaving razors is owned by Gillette U.K. Ltd., England. The well-known status of the trademark 7 O’Clock is acknowledged. As a result, passing-off will result from using the mark in relation to a toothbrush.
- ENFIELD BULLET is owned by Enfield India Ltd. BULLET is a well-known trademark. It is not permitted to be copied even in respect of different goods but appeals against Registrar’s decision are allowed.
- AMUL is owned by Kaira District Co-Operative Milk Producers Union Lld. Amul is best known for its butter, cheese, and milk, but also produces a range of other dairy products, including ice cream, yogurt, and milk powder. Amul has a strong presence across India and is known for its humorous and catchy advertising campaigns. The IPAB emphasized AMUL as a Well-Known Trademark.
- MONGINIS for cakes, pastries, and other bakery products is owned by Monginis Foods Private Limited. The Registrar noted that cakes, pastries, and other bakery goods are among the things for which the Mark is well-known.
- NIVEA is owned by Beiersdorf A.G. Nivea is a well-known brand with a solid reputation and recognition around the world. These are marks where the distinction between the name and the product is hazy. Instead of just being associated with a particular sort of goods or service, the mark now also serves to identify the source or the person.
