While the Trade Marks Registry has since 2003 published a list of "well-known" marks on its website based on court decisions declaring a mark to be "famous" or "well known", the Trade Marks Act, 1999 ("the Act") had no specific provision to seek a formal declaration regarding the well-known status of a mark. To address this concern of brand owners, the Trade Marks Rules, 2017 ("the amended Rules") which came into force with effect from March 6, 2017 introduced the provision for determination of well-known trademark by Registrar vide Rule 124. However, this Rule does not appear to clearly spell out the procedure, criteria and evidence required for determination of a well-known mark.
The Controller General of Patents, Design and Trade Marks has now issued a public notice dated May 22, 2017 which provides procedural guidelines for filing application for determination of a well-known trademark by the Registrar under Rule 124 of the amended Rules and lists out the documents to be accompanied with the application. The notice can be accessed from the link below:
Undoubtedly, this notice provides clarity on the procedure and forms to be used by brand owners seeking declaration/determination of well-known trademark under Rule 124 of the amended Rules. However, by confining the criteria asking the brand owners to produce judgment/ order from Indian court or Registrar of Trademarks, the guidelines seem to have read down the scope of Section 11(6) of the Act which is broadly worded and does not impose geographical restriction in terms of record of successful enforcement action and use of the mark. Further, the notification does not seem to clearly spell out the criteria laid down by the courts in determining notoriety of a brand where impact of social media, web presence of a brand and its knowledge on account of travel by Indian citizens and expatriate Indian population have been considered relevant factors in determining whether a brand qualifies as a well-known. Overall, we believe these criteria are relevant and will be taken into account by the Trade Marks Registry when considering application for determination of a well-known mark.