Trademark is a symbol, logo or word which is unique and is used to represent a company, business or any product. Once the trademark is registered, other companies or businesses cannot use it as long as that organisation is in use. Patents and trademarks are different from each other as patents are given for 20 years but trademarks are given for life long until the organisation ends. Organisations have to apply and go through proper procedure for ownership confirmation. Sometimes signs of trademarks become so famous that people don’t see the name but recognize the company with a trademark.
Well- Known trademark came with the new Trademark rules of 2017 which allows an organization to apply for well-known trademark which gives them more benefits, more protection and assures them from infringement of their trademark. In India, well-known trademarks are given on the basis of reputation nationally and internationally. Well-known trademark is one which is one unique face in public and any company or organization connected to it will be known by the general public. Goodwill and reputation of organizations with trademarks are restricted to geographical borders only but those with well-known trademarks have goodwill and reputation across the nation as well. In India, Google, AMUL, Apple, etc. are the well-known trademarks right now. There are around 81 well-known trademarks in India declared by Judicial Authorities.
Section 11(2) of Trademark Act, 1999 defines Protection of well-known mark across all classes. It means that the well-known trademark should be protected and recognized in all the trademark classes of goods and services.
There are certain points or criteria that a registrar keeps in mind while changing a trademark into a well-known trademark. These are some important points point that the registrar take in account:
• The number of persons involved in the chain of goods and services.
• The number of persons know about the organization or the trademark.
• The number of consumers for buying the product.
• They the extent or geographical boundaries in which it goes through.
• They also check how often it is bought by the consumers.
The criteria’s of changing a trademark to a well-known trademark is an important part for a society as it keeps everyone aware about how the organizations are managing their reputation. First, they check how many consumers are involved in that product or item or how many are showing interest or how many are interested. Then they check how many people know about that brand or trademark. The registrar checks which group in the society knows about that item or which class of society wants it. Then they find out the number of people who are willing to purchase it or find out the reviews of people which helps them a lot. Then they check how far is the product’s boundary whether it is nationally used or it is used in states or internationally. They check the geographical area of the item to check the crowd. They also check how frequently this is bought.
This is the criteria by which the registrar checks and allows a person to change a trademark to a well-known trademark. This is a long procedure which needs proper documents and a proper check.
The trademark rules for well-known trademarks came into force in 2017. Rule 124 was determined for a well- known trademark. According to rule 124 application is to be filed with the given fees. It should be done by e-filing on the official website of the trademark i.e. www.ipindia.nic.in.
This application should consist of following documents:
• A statement describing the applicant’s rights for trademark and claim for trademark registration.
• Evidence regarding the rights of applicant’s trademark, evidence of sale turnover based on registered trademark, evidence of number of actual consumers of the product, evidence regarding publicity and evidence of the product and the expenses incurred for that and evidence related to publicity of the product in public or in wide areas.
• Copy of judgement by the court or the registrar determining the trademark as a well-known trademark.
• All evidence and files should be in pdf format and the overall file should not increase 10 MB.
• Then the office may publish the name or the symbol of the organization in a well-known trademark list.
• Any person who is against this list shall give in writing to the registrar stating the reason and also giving evidence or supporting documents.
• The copy of complaint will be communicated within the stated time.
• Any objections will be communicated to the applicant.
• After resolving this there will be the illusion of the well-known trademark.