Further to our Newsflash dated 2 June 2017 on the captioned subject, the Controller General of Patents, Designs and Trade Marks (CG) has issued/published slightly revised guidelines (accessible here) replacing the earlier version. From the earlier version, it appeared that the requirement of a Judgment of any court in India or Registrar (as per Section 11(8)) was mandatory for inclusion of a mark in the list of well-known trademarks maintained by the (Indian) Trade Marks Registry (TMR). We had set our concern in this regard in our comment to our Newsflash dated 2 June 2017. The CG appears to have addressed this concern by adding the words ‘if any’ (refer to the underlined words below) to the following requirements:
- Details of successful enforcement of rights, if any, relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar;
- Copy of the Judgment of any court in India or Registrar, if any, wherein the trademark is determined as well-known trademark.
This change will be welcomed by brand owners as the same goes back to the spirit of Rule 124 of the new (Indian) Trade Marks Rules 2017 (New Rules), which does not set out such mandatory requirement.
Please note that the link set out for the earlier version of the guidelines in our Newsflash dated 2 June 2017 has been deactivated by CG/TMR.