Protection of a
Well-Known Trademark

Yes..even popular brands need protection, get in touch with us and quickly procure a well-known trademark status to your brand!

1. Quick protection of well-known trademarks
2. Talk to expert attorneys
3. Get a clear road map

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Why Should I Use Vakilsearch for Protection of Well-Known Trademarks?

Let’s face it… Just because your brand is a household name doesn’t mean your trademark is safe? Unless… You get It declared as a ‘well-known trademark’ through Vakilsearch. We can help in the protection of well known trademarks in just 3 easy steps.

Step 1 Step 2 Step 3
Step 1

Fix an appointment with our trademark experts to resolve all your queries

Step 2

As per the process, provide all the required documents. Our team will initiate the required paperwork

Step 3

Our team will avail the well-known trademarks status and keep you updated

Fix an appointment with our trademark experts to resolve all your queries

As per the process, provide all the required documents. Our team will initiate the required paperwork

Our team will avail the well-known trademarks status and keep you updated

Know The Process

Well-Known Trademark

Concept of Well-Known Trademarks

Well-known trademarks are defined under the Trademarks Act of 1999 as a mark that has become so popular to the substantial portion of the public that uses these goods and services will assume that there is a connection in this particular business when a similar mark is utilised by a competitor. This will result in valuable customers moving on to the fake brand. In order to prevent this certain popular brands are provided the status of a trademarks.

What Are the Different Types of Trademark ?

 A trademark is a symbol, word, or group of letters and numbers that a business uses to claim ownership of a term or visual representation of its goods and services. Basically they are classified into five different types.Product TrademarkThis is a kind of mark placed directly in the goods rather than the service. This kind of trademark is used to identify the product’s place of origin and supports a company’s reputation. Given that they represent goods, trademark applications filed under trademark class 1-34 may be referred to as product marks.Service MarkA service mark, like a product mark, is used to distinguish a service from a product. The primary goal of this service mark is to effectively differentiate the owner and other service providers.Shape MarkShape marks are solely used to protect a product’s shape so that customers would link it to a particular manufacturer and decide to buy the goods.Model MarkThese products have distinctive design patterns that are mandatory for identifying the product. Only the patterns that stand out as a unique mark are allowed to have this type of recognition.Sound MarkA sound mark is a noise that can be connected to a good or service coming from a specific vendor. People must be able to quickly and easily recognise the service, product, or show that the sound stands for in order for it to be registered as a sound mark.

Difference Between Trademark and Well-Known Trademark

Trademark	Well-Known Trademark
A trademark can be a word, sign, symbol, or even a graphic that is used to identify a company, its products, or its services from those of its rivals. This is the typical definition of a trademark.	On the other hand, according to the Trade Marks Act of 1999, a mark is considered to be ‘well-known trademarks’ if it is so popular to a sizable portion of the public who uses the product goods or services and knows that particular trademark by heart.

They may end up assuming that there is a connection between the already present goods and the competitor goods using the same mark. In layman terms a well known trademark is something that is very much popular like Puma or Nike.

Factors Determining Well-Known Trademark

 

1. Awareness of the mark among relevant public groups
2. The duration, and location of a trademark
3. The overall time period of the trademark’s promotion
4. The length of the registration, the areas covered, and the history of successful use of the mark in other jurisdictions.

Well-Known Trademarks and Law in IndiaRolex Sa v. Alex Jewellery Pvt Ltd & Ors, CS(OS) 41/2008Because the defendant was using the name ‘Rolex’ on their bogus jewellery boxes, the plaintiff Rolex, a Swiss watch company, filed a lawsuit against the defendant for trademark infringement. The court forbade the defendant from using the plaintiff’s trademark because it was well-known and highly esteemed and because doing so would lead to confusion among consumers who would incorrectly think that the jewellery was made by the plaintiff’s company ‘Rolex SA’.Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, CS(OS) 2163/2010 & I.A. No.14225/2010The Hon’ble Delhi High Court forbade the defendant in this case from using the term ‘Microsoft’ since it was an internationally recognised and well-respected brand. The court went on to say that since the defendant would not be allowed to use the name of the well-known trademark as their own, since the plaintiff’s trademark had unique goodwill and repute.Tata Sons Ltd. v. Manoj Dodia, CS(OS) No. 264/2008In this case, the defendant Manoj Dodia, the owner of Durga Scale Company, was sued by the plaintiff Tata Sons Ltd, a well-known manufacturer of cars and heavy vehicles, for the violation of the TATA trademark. The defendant operated a business that manufactured scales with the A1 TATA mark. The plaintiff sought rescue of the infringing equipment, a permanent injunction, harms, and an accounting. The defendant was forbidden by the court from utilising the plaintiff’s trademark because he was trying to capitalise on the established brand name’s goodwill. Due to the plaintiff’s well-known and established brand name both within India and internationally, the court granted a permanent injunction as well as punitive damages totaling.

Well-Known Marks and Their Protection

The majority of nations protect well-known trademarks from regular trademarks that are deemed to be a reproduction, imitation, or translation of those marks only if those marks are likely to cause confusion in the relevant market. Protection of well-known trademarks is a new field that was only introduced in 1999.Protection for well-known trademarks and marks that are registered in good faith are provided by Section 11 of the Trademark Act, 1999. According to Rule 124 of the Trademark Rules, anybody may submit an application for the registration of a well-known trademark.

Well-Known Trademark Case Laws

Trademark Rules 2017The trademark registry doesn’t allow registration of trade marks that are identical as that of a well known trademark. Additionally, it organises the criteria for identifying well-known trademarks through a different application. Anyone seeking to determine whether a trademark is submit an application to the registrar after paying ₹1,000,000 in TM-M form.The Trademark Act, 1999In 1998, India subsequently put her signature on the Paris Convention’s instrument of accession. According to Rule 124 of the Trademark Rules, anybody may submit an application for the registration of a well-known trademark. It declares that all popular trademarks for goods and services must be protected.

Section 11(6) of the Trademark Act addresses the requirement of factor consideration prior to the determination of a well-known trademark. In order to protect well known trademarks WIPO opted foreign joint resolution resulting in the protection of well known trademarks in 1999.

The Trademark Act’s Section 11(7) states that when determining whether a trademark is known or recognised in the applicable section for the purpose outlined in Subsection, the number of actual or positional customers of goods and services, the number of individuals involved in the distribution channel system, and the business circle dealing with the goods and services to which the trademark shall apply should adhere to all the factors that are taken into account. The prerequisites that are not necessary to determine whether a trademark is covered by Section 11(9) of the Trademark Act.

Benefits of Well-Known Trademarks

• Safeguards Advertising and Branding Investments

All firms must invest in branding and advertising due to the intense competition in today’s markets. Businesses invest in a range of advertising platforms, such as the internet, newsprint, radio, and TV, to advertise their brand to consumers. A well-known trademark can help in safeguarding the investments and provide greater ROI.

• Protects Against Unethical Competition

This serves as an effective weapon in the fight against unfair competition is a trademark registration. Today’s market is filled with copycats and counterfeiters that profit from brands that have been dishonestly used.

• The Enforcement of Trademark Registrations Against Company Name

According to the Companies Act of 2013, a company’s name cannot be the same as or nearly the same as a registered trademark. The names that the business plans to use in the future can be blocked using this clause. A trademark and a business name cannot be the same or very similar. As a result, once a trademark is registered, a corporation cannot be created under the same name.

Criteria for Well-Known Trademarks

• The general Indian population is aware of the trade mark

• How many people working in the channels used to distribute the goods or services

• How many customers are there, either current or upcoming, for the products or services

• The area, scope, and duration of any such trademark usage

• The sector of the economy that deals with their goods or services.

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