Protection Of Well-Known Trademarks in India

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.

Talk to our experts

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

Provide all the needed documentation

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

Protect your well known trademark

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

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 Well-Known 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 four different types.

Product Trademark

This 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 Mark

A 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 Mark

Shape 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 Mark

These 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 Mark

A 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

As per Section 2 of the Trademarks Act of 1999 a well-known trademark has to fulfil the following conditions to achieve that status:

Awareness of the mark among relevant public groups
The duration, and location of a trademark
The overall time period of the trademark's promotion
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 India

Rolex Sa v. Alex Jewellery Pvt Ltd & Ors, CS(OS) 41/2008

Because 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.14225/2010

The 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. 264/2008

In 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 2017

The 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 well-known may submit an application to the registrar after paying ₹1,000,000 in TM-M form.

The Trademark Act, 1999

In 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 well-known are 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.

List of Well-Known Trademarks

Here is a list of well-known trademarks of India

Coca-Cola

Pepsi

IBM

Samsung

Nokia

Microsoft

Intel

Sony

Adidas

Reebok

Puma

Nike

FedEx

Canon

Nikon

Panasonic

Mitsubishi

Honda

Frequently Asked Questions (FAQs)

Why Vakilsearch

We are pioneers in protecting the popular! Yes, our team of experts can effectively complete the whole process of trademarks registration in just a few steps. Get on call with a trademark registration expert and resolve all your queries. Our team will provide a complete road map to the whole process and help you with all the compliances. All this at fantastic affordable prices.

Vakilsearch: Legal Information for Indian businesses

Since 2011, Vakilsearch has been a one-stop solution for any business or entrepreneur looking for a lawyer, chartered accountant or company secretary. We have been particularly instrumental in ensuring startups are fully compliant with India`s labyrinthine legal system. Over the past five years, the depth of our offerings, connection with reliable professionals, affordable prices and customer satisfaction has made us the largest online facilitator of legal services in India. We have already served over 120,000 customers and have a steadily growing network of over 1000 professionals from all the major cities (particularly the metros of Mumbai, Bangalore, Chennai, Delhi and Kolkata) on our online platform. In 2016, we launched Libra, a law practice management software, for legal professionals across India.

Starting a Business

Many founders are confused about what kind of entity to register when they start their business. Should it be a private limited company, limited liability partnership , partnership firm, one person company or a sole proprietorship. Each of these has very specific advantages and disadvantages. There is no one type for all businesses. A private limited company registration, for example, would be a good fit for any venture that will look for funding at a later stage. You can contact Vakilsearch for all the advice you need. We assure you of great service at a reasonable price. You can find a company name availability here.

Intellectual Property

In modern business, there is no other asset as valuable as intellectual property, and yet so many startups end up neglecting it. But this is surely not advisable, as trademarks, copyrights and patents ensure that you have sole rights to your creation, be it your brand, your designs or your inventions. At Vakilsearch, we are well equipped to handle all your IP requirements. We facilitate trademark applications in just three days, copyright registration for all your software, pictures, audio and video content, and can connect you to patent attorneys to conduct a patent search and file your patent applications. You can find a Trademark availability here.

Government Registrations

In India, you need a license for everything in business. Started a manufacturing business? You need a GST Registration and a Trade License Registration. For a food business, you need an FSSAI license. Have employees? You need a Professional Tax registration and Shops & Establishments Act Registration. If that`s not enough, you also need to file GST Returns and Professional Tax Returns.

Legal Documentation

The worst way to approach business is to just get into new partnerships and arenas without examining consequences. By getting a lawyer to draft contracts or agreements with new vendors, employees and investors, you`re ensuring that you have all the downsides covered. At Vakilsearch, we connect you to lawyers who will deliver complex documents, from shareholders agreements and founders` agreements to terms of service/privacy policy and non-disclosure agreements, at a reasonable cost in a few days` time. Well-known startups, such as Holachef and Big Basket, have chosen to connect with a lawyer through us for their documentation work.

Mandatory Compliance

It`s not enough to have started a private limited company or an LLP. You need to comply with all the requirements of the Ministry of Corporate Affairs and Income Tax Act once you do. You need to inform them of every relevant change you make, whether it is adding a director, removing a partner or increasing authorised share capital. You also need to file annual returns and maintain your accounts. In the case of a private limited company, you even need them audited. At Vakilsearch, we facilitate all these services completely online. Which means you can engage a professional on retainer for the year and we`ll ensure that all the formalities are completed for you while you focus on your business.

Libra for Lawyers

The legal fraternity in India comprises largely independent lawyers and small law firms with under five partners. Such practices have a difficult time managing their practices efficiently. Our law practice management software Libra is, therefore, a game-changer, as it will enable lawyers to single-handedly manage their practice. It gives them 24-hour access (on mobile and desktop) to their clients, cases, schedule, bill payments and even nation-wide judgements. Software for lawyer`s offices will have a huge impact on any area of the practice.

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