Well-Known Trademarks – Pros and Cons of Its Amendments

Trademark

A Trademark in relation to goods or services means a mark, design, or expression which represents a product or service of a source from the ones of other sources and is legally registered under The Trade Marks Act, 1999.

Definition of Well-known Trademark under Sec 2(zg) of The Trade Marks Act, 1999

Well Known trade mark, in relation to any goods or services, means a mark 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 rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.

Amendments of 2017

In the Pre- amendment period, a trademark would get a status of a well-known trademark only after going through a court proceeding for a trademark infringement or by the registrar during opposition. But because of the amendments of 2017, a person need not wait for somebody to infringe his trademark or oppose it but can directly apply for the status of a Well-known Trademark to the registrar of trademarks by paying a fee of 1,00,000 rupees and produce documents in support of his claim, if the registrar is satisfied with the documents submitted in support of his claim subject to sub sections 6 to 9 of section 11 of the Act and if there are no objections to it, the mark shall be granted the status of  ‘Well-known Trademark’. Though this sounds like an easy process, a coin always has two sides, this process also has some pros and cons to it.

Pros

The main objective of starting a concept of well-known trademark is to protect the interest of trademark owners from infringers who wish to make illegal profits. The amendment makes it easy to achieve the object by making it an easier process than the long court proceedings. The amendment also makes it less expensive than earlier. The new amendment reduces the burden of cases pending in the courts as there is no need of court proceeding

Cons

Although, the process to get the status of well-known trademark has become easier and less expensive as compared to pre amendment period, however, there are many grounds given in the Act that the registrar needs to consider before registering a well-known trademark. If the trademark fails to satisfy any of the mentioned grounds, then the well-known trademark will not be registered provided it has already been determined so by the court or registrar. The Act has given certain grounds to be considered by the registrar, but all the power lies in the sole hands of the registrar which might be abused. Since the process has been made easier and less expensive there would be a lot of applications pouring in before the registrar for well-known trademarks the registrar needs to be very careful while dealing with the applications failure which may have an adverse result. The level of scrutiny by the registrar should meet the level of court proceedings, otherwise, it may result in failure to attain the main objective of well-known trademarks.

Conclusion

The new amendments in case of well-known trademarks look very easy and advantageous on the face of it but if they are not dealt with very carefully and cautiously it would have adverse effects on the objective of the concept well-known trademarks.

 

Author: M. Sai Krupa, Internat IP and Legal Filings and can be reached at support@ipandlegalfilings.com.

References:

[1] THE TRADE MARKS ACT, 1999

[2] http://www.manupatrafast.in/NewsletterArchives/listing/ILU%20RSP/2015/Nov/Proposed%20Amendments%20to%20Indian%20Trademark%20Law.pdf

[3] https://www.ip-watch.org/2017/03/22/changing-perspective-well-known-trademarks-india/

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