We have done it! We have got our clients’ mark declared as a well known trade mark by the Trade Marks Office in the first of its kind under the new Regime.
The Indian Trademarks Office has published its first list of trademarks determined by the Registrar of Trademarks as Well Known upon requests being filed under Rule 124 of the Trademark Rules. The Registrar of Trademarks has determined 6 trademarks as well known including BIOCON.
WELL KNOWN TRADEMARKS :- The Trade Marks Act, 1999 defines a “well-known trademark” as a mark that has become a 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 course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned good or service.
RULE 124 :- Rule 124 was introduced under the Amended Trademark Rules, 2017. The said Rule 124 deals with determination of Well Known Trademark by Registrar and entitles any person to request the Registrar for determination of a trademark as well-known supported by a statement of case the evidence and documents relied by the applicant in support of his claim. The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11 of the Trademarks Act 1999.
FACTORS CONSIDERED WHILE DETERMINING WELL KNOWN TRADEMARK
The factors to be fulfilled for a mark to qualify as a well-known mark are :-
- Knowledge or recognition of the trademark in the relevant section of public through promotion
- Degree of knowledge of the mark amongst members of the public as assessed by market share, intensity and duration of mark
- duration, extent and geographical area of use and promotion of mark
- duration and geographical area of registration obtained or applications filed for registration of that trade mark to the extent they reflect the use or recognition of the trade mark
- the record of successful enforcement of the rights in that trade mark.
- the number of actual or potential consumers of the goods and services, the number of persons involved in channels of distribution of goods and services, business circles dealing with the goods and services
- It is not a required condition for determining whether a trade mark is a well-known trade mark –
- that the trade mark has been used in India:
- that the trade mark has been registered:
- that the application for registration of the trade mark has been filed in India:
- that the trade mark—
- is well-known in, or has been registered or applied for in; any jurisdiction other than India: or
- that the trade mark is well-known to the public at large in India
On a consideration of all these aspects and documents supporting the same, a trademark is determined to be well known by the Registrar of Trademarks.
Among the marks listed above, the Indian Pharmaceutical giant, Biocon, has been determined as well-known trademark in relation to the goods and services provided by the same.
Biocon’s combination of specialized talent, state of the art research, manufacturing infrastructure and a culture of deep science and regulatory compliance, has given it a competitive edge consequentially acquiring a distinctiveness in the market which has now been awarded the status of a ‘well-known trademark’, marking yet another milestone for the company.
The well known status accords the highest protection with respect to the preservation of its distinctive nature. Such a protection will forbid others in the trade from free riding or passing off the well-known mark for their own malafide purposes.
The acknowledgment of a mark as a ‘well-known trademark’ is nothing less than a reward to the proprietors of a mark. A well-known trademark goes to show the extent of diligence, time, hard work, investments and promotions that has been undertaken by the brand to acquire a status of distinction in its industry. Though the existing process of Courts declaring whether a mark is well-known or not still exists, a person can now directly apply to the Registrar of Trademarks for a mark to be declared as a well-known mark.