The process of declaration of trademarks as well-known in India saw significant changes with the introduction of the Trademark Rules 2017. Well-Well-known trademarks were identified, prior to 2017, primarily through judicial pronouncements in the course of judicial proceedings like opposition, rectification, or injunction suits. There was no formal process to have a trademark declared well-known outside these court battles. Nevertheless, the Trademark Rules 2017 did offer a more formal process in particular through Rule 124, whereby proprietors of trademarks themselves may apply to have their marks declared well-known, directly filing an application Form TM-M with the Registrar of Trademarks.

Traditionally, the process had been time-consuming and costly because trademark owners could only rely on court decisions to confirm if their marks are well known, which left very long litigation to ensue in court. But since 2017, the process has become more efficient. On application directly to the Registrar, this becomes a quicker and cheaper process as trademark owners get evidence to include efforts of advertisements, sales records, and recognition in the market. This administrative path allows trademark owners to request recognition with little or no necessity of litigating.

Another important difference lies in the requirement of documentation. In that respect, prior to 2017, there was no clear answer to what actually makes up the documentation required to prove the mark is well-known and leaves much room for discretion by courts based upon mere legal points of view. Under the new provisions, an applicant is required to submit a statement of case with evidence, such as proof of use and promotion of the mark, information on enforcement actions, and judgments passed by courts regarding the trademark. It therefore clarifies the process in which well-known trademarks are credited based on tangible evidence.

For instance, before the enactment, only courts could declare a trademark to be well known, and the Registrar did not have such a jurisdiction. Under the 2017 provisions, the jurisdiction of declaring a trademark to be well known has now been explicitly conferred on the Registrar but based upon the evidence presented. Such recognition by the administrative echelons greatly reduces the burden on courts and accelerates the declaration of trademarks as well known. Lastly, the feature of putting these trademarks in an official list maintained by the Trade Marks Registry is a development. Upon being declared to be well-known by the Registrar, such a trademark is put into this list, thus offering more protection on different categories of products and services compared to the case before 2017 where court rulings were the only instances the courts declared trademarks as being well-known.

Criteria for Recognition and their legal implications

The factors that are of well-known trademarks, which are crucial to be recognized include:

• Recognition and Goodwill in the General public

• The period and extent of the use

• The Market share of the marks and associates it with specific goods or services.

• The reputation in National and International markets

• Commercial value of Mark

Though marks are very well known across the globe, the courts have emphasized the fact that substantial evidence must be provided to prove that the mark has generated goodwill in India. It is further crucial to note that acceptance of the trademarks not only prevents third parties from unauthorized use and registration but also builds an overall brand protection framework within India. Furthermore, Recent case laws, however, have brought forth the ground that recognition as a well-known mark is not the grant of absolute rights. The Delhi High Court in the case of Vans Inc. v. FCB Garment Tex clarified that the declaration of a mark as a well-known trademark does not stake such absolute rights over similar marks registered before its declaration.

Significant Developments and Judicial Clarifications

There are Several important cases which have clarified the legal landscape surrounding well-known trademarks.

In Tata Sia Airlines Limited v. Union of India, the Delhi High Court also held that even after declaration of a mark to be well-known by a judicial authority, the owner of the trademark needs to file an application under Rule 124 of the Trademark Rules 2017 for the official entry into the list of well-known trademarks, though judicially recognized.

The case of Dr. Reddy's Laboratories v. Fast Cure Pharma, the court upheld the claims of Dr. Reddy against Fast Cure for trademark infringement in respect of mark "RAZO," establishing the significance of the reputation already acquired as a factor in settling such disputes. In MakeMyTrip (India) Pvt. Ltd. v. Google Ads., Delhi High Court of India has established that using a trademark as keyword in Google Ads cannot be termed infringement unless it causes confusion in the consumers' minds. It is one such case marking the dawn of the emerging form of digital marketing within the rights of trademarks.

The Delhi High Court has also defined the factors essentials for the recognition of the well-known trademarks with the help of its judgments. Thus, in cases such as Haldiram India Pvt. Ltd. vs. Berachah Sales Corpn., the court held Haldiram as well-known marks and indicated that they possess a 'high repute' among the General public. Similarly, in Hermes International vs. Crimzon Fashion Accessories Private Limited, the court held Hermès as a well-known mark, again establishing the concept of high repute among the concerned public as the basis for declaring it as a well-known trademark. These marks satisfy the provisions of Sections 11(6) and 2(1) (zg) of the Trademark Act. Additionally, the trademark Royal Enfield was also acknowledged as well-known within the motorcycle industry in the case of Eicher Motors Ltd. Vs. Nitin Service Point and Automobiles, further illustrating the judiciary's active involvement in this area. Additionally, Prominent Companies Brands gained the status of Well-Known Status in the year 2024, which includes 'Abbott', 'Nykaa', 'Jockey'. This recognition creates further strengths in legal protection and exclusiveness of these brands in Indian Market preventing unlicensed use and strengthen them with their established good reputation.

Furthermore, as India's trademark rules change, legal procedures for recognizing brand value and reputation expand. Recent judicial decisions protecting well-known marks increasingly take into account the rights of previous trademark owners. This field of law will increase as more explanations and decisions emerge from the courts, and brands will become increasingly relevant.

Author : Shejal Sharma, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

Reference:

1. https://www.theippress.com/2024/07/31/trademarks-declared-well-known-2023-24/

2. https://illuminip.com/index.php/2023/09/05/recent-development-in-well-known-trademark-a-critical-analysis/

3. https://www.bananaip.com/recent-developments-principles-governing-well-known-trademarks/

4. https://www.theippress.com/2022/01/04/significant-developments-with-regard-to-well-known-marks-under-the-trademarks-rules-2017-a-critical-analysis/

5. https://www.mondaq.com/india/trademark/1466082/patent-trademark-review-essential-developments-in-indian-ip-law