India: Proposed Amendment to Allow Applications for Declaration of Marks as Well Known
The Trade Mark (Amendment) Rules, 2015, were released for public comment in November 2015, and look set to be in effect very soon. The aim of the rules in general appears to be to drastically reduce the number of forms to be used, and simplify the registration process. One important amendment will allow for applications to be made to the Registrar to declare a mark as well known.
Under proposed Rule 127 (Determination of Well Known Trade Mark by Registrar):
Any person may, on an application under the new Form TM-M, request the Registrar of Trade Marks for determination of a trade mark as well known.
The request is to be accompanied by a “statement of case” and evidence and documents relied on by the applicant.
For the purpose of the determination, the Registrar may stipulate criteria in this regard, and call for such documents as thought fit.
In the event that the mark is determined as well known, it shall be included in the list of well known trade marks maintained by the Registry.
If, at any time, it is found that a mark has been erroneously or inadvertently included in the list of well known trade marks, the Registrar may remove such mark from the list.
As the procedure currently stands, a court determination is needed to declare a mark as well known. This is a myopic way of determining marks as well known, and opens several entities up to unnecessary litigation. As the list stands (as of December 16, 2016, accessed here) 81 marks are on it. Notable absentees are Apple, BMW, and of more recent vintage, Facebook.
Are you the proprietor of a mark that could potentially be declared well-known?
The application for such a declaration is a worthy investment, which would prevent serious problems later on. The declaration would provide considerable support in proving cases of infringement and passing off.
Therefore, proprietors would do well to gather evidence and documents that would help build the case before the Registrar, in order to strengthen their case as much as possible.
Proprietors should also consider filing their applications as soon as possible, and secure their rights with alacrity.
In case of marks that are potentially well known, it is advisable to seek legal advice, and secure such mark(s) for generations to come.