India: Trade Marks Registry Issues New Guidelines for Declaration of Marks as Well Known

Following the introduction of the Trade Mark Rules, 2017, the Trade Marks Registry has issued guidelines for the determination of marks as well known by the Registrar.

The application should be accompanied by the following documents:

• Statement of case describing the applicant’s rights in the mark, and describing the applicant’s claim that the mark is a well known mark,

• Evidence in support of the applicant’s rights and claim including:

• Evidence as to use of the mark

• Applications for registrations made and obtained

• Annual sales turnover of the applicant’s business based on the subject mark duly corroborated

• Evidence as to the number of actual or potential customers of goods or services under the said mark

• Evidence regarding publicity and advertisement of the said mark and the expenses incurred therefor

• Evidence as to knowledge or recognition of the mark in the relevant section of the public in India and abroad

• Details of successful enforcement of rights relating to the said mark, especially the recognition of the mark as well known by any court in India or the Registrar of Trade Marks, along with a copy of such judgment.

After the receipt of the application, along with the official fee (USD 1650 approximately), the office will consider the claim of the applicant on the basis of documents submitted.

The office may publish the details of the mark, and any person who wishes to object to the inclusion of the mark in the list of well-known marks may file his objection in writing to the Registrar of Trade Marks stating the reasons for the objections along with any supporting documents. A copy of the objection may be communicated to the applicant for comments within the stipulated time.

In the event that the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks on the official website.

The guidelines have clarified the position and the process of application considerably, and applications for determination of marks as well known will only increase. The declaration, which earlier could only be done by the Registrar or the court in a judgment, can now be obtained with considerably less expense and time.

If you are the proprietor of a mark that may qualify as a well known mark, then the first order of business will be the gathering of evidence to support the application. Following this, seek expert advice about the strength of your case.