Well-Known Trade Marks

 

A well-known mark means a mark, in relation to any goods or services, which has become so to the 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 the course of trade or the rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.

 

 

Section 11 (6) and 11(7) lay down the relevant factors for determining a trade mark as a well-known mark:

 

• Knowledge or recognition of that mark in the relevant section of the public including knowledge in India as a result of promotion of the trade mark – taking into account number of actual or potential consumers, number of persons involved in channels of distribution, business circles dealing with the goods or services;

• Duration, extent and geographical area of any use or promotion (including advertising/ publicity and presentation/ exhibition of goods or services) of that trade mark;

• Duration and geographical area of any Indian trade mark applications or registrations to the extent they reflect use or registration;

• Record of successful enforcement

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Section 11 (8) provides that a mark determined to be well-known in at least one relevant section of public in India by any Court or Registrar shall be considered as a well-known mark for Registration under the Act.

 

Section 11(9) clarifies that use in India, registration in India or abroad, trade mark application in India or abroad, mark being well-known in India or abroad, shall NOT be a pre-condition in determining whether a trade mark is a well-known trade mark.

 

Section 11 (10) provides for protection of a well-known mark against identical or similar marks and consideration of bad faith as a relevant factor in deciding opposition proceedings.