Why Is a Well-Known Mark Significant?

A well-known trademark is a trademark that is widely known and recognized by consumers. It has a strong reputation and is associated with high-quality goods or services. Well-known trademarks are valuable assets for businesses because they can help to attract customers, increase sales, and deter competition.

In addition, well-known trademarks receive additional protection under trademark law. For example, well-known trademarks can be protected from being used on goods or services that are not related to the trademark owner’s goods or services. This is to prevent consumers from being confused or misled about the origin of the goods or services.

How to List Your Mark as Well-Known?

There is no formal process for listing a trademark as well-known. However, there are a number of factors that courts will consider when determining whether a trademark is well-known, including:

• The duration, extent, and geographic reach of the trademark use.
• The amount and nature of advertising and publicity of the trademark.
• The nature of the goods or services associated with the trademark.
• The degree of recognition of the trademark by consumers.
• The existence of any actual confusion caused by the trademark.

If you believe that your trademark is well-known, you should document the evidence that supports this claim. This could include evidence of your trademark use, advertising and publicity, and consumer recognition. You may also want to consider registering your trademark in as many countries as possible.

Remedies Against Infringement Of Well-Known Trademark

If your well-known trademark is infringed, you have a number of remedies available to you, including:

• Injunction: An injunction is a court order that prohibits the infringer from using your trademark.
• Damages: You may be able to recover damages from the infringer to compensate you for the losses you have suffered as a result of the infringement.
• Accounting of profits: You may be able to require the infringer to account for the profits they have made from their infringing activities.
• Destruction of infringing goods: You may be able to have the court order the destruction of any infringing goods.

Filing Of A Well-Known Trademark

To file a well-known trademark in India, the applicant must submit the following documents to the Registrar of Trademarks:

• Form TM-M
• A statement supporting the application’s grounds for well-known status

• Evidence to support the claim that the trademark is well-known, such as:

  • Evidence of trademark use in India and/or abroad
  • Evidence of advertising and publicity of the trademark
  • Evidence of consumer recognition of the trademark

The applicant must also pay the prescribed filing fee.

Duties of the Applicant

The applicant is responsible for ensuring that the application is complete and accurate. The applicant must also provide the Registrar with any additional information that the Registrar may request.

Duties of the Registrar of Trademarks

The Registrar of Trademarks is responsible for examining the application to ensure that it complies with the requirements of the Trademark Act and Rules. If the application is found to be in order, the Registrar will publish the details of the trademark in the Trade Marks Journal.

Any person who objects to the inclusion of the trademark in the list of well-known trademarks may file an opposition within the specified time period. The Registrar will consider the opposition and issue a decision.

If there is no opposition, or if the opposition is unsuccessful, the Registrar will include the trademark in the list of well-known trademarks.

Well Known Trademark in IPR

A well-known trademark is a trademark that has acquired a reputation or goodwill in the relevant sector or segments of the public, such that its use by another party for identical or similar goods or services is likely to cause confusion or deception.Well-known trademarks are given special protection under intellectual property law (IPR). This means that they can be registered even if they are not used in India, and they can be enforced against third parties who use them without permission, even if the third party is not located in India.

The criteria for determining whether a trademark is well-known vary from jurisdiction to jurisdiction. However, some of the factors that are typically considered include:

• The level of inherent distinctiveness of the trademark.
• The duration and extent of use of the trademark.
• The geographical extent of the reputation of the trademark.
• The amount of advertising and promotion of the trademark.
• The nature of the goods or services associated with the trademark.
• The existence of registered or unregistered trademark registrations for the trademark in other jurisdictions.

Well Known Trademark Application

An application for registration of a well-known trademark can be filed with the trademark office in the relevant jurisdiction. The application must be accompanied by evidence to support the claim that the trademark is well-known. This evidence may include:

• Sales and marketing data.
• Advertising and promotional materials.
• Media coverage.
• Expert opinions.
• Registrations of the trademark in other jurisdictions.

The trademark office will review the application and decide whether to register the trademark as a well-known trademark. If the trademark is registered, it will be given special protection under IPR law.