A well-known trademark and its benefits
Legislation on trademarks and its benefits has indeed had a profound impact on the notions of commerce in the 21st century and has had a significant effect on the way trade is conducted in the 21st century. It is the responsibility of the Indian Parliament to bring into being the Trademarks Act 1999, which follows the WIPO Resolution and the TRIPS agreement that India’s Parliament is a party. The legislation was the first to grant statutory protection to these well-known trademarks, and it was the first such legislation in the world. It was in 2003 that the Act came into force.
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How do you define a well-known trademark and its benefits?
According to Section 2(1)(zg) of the Trademarks Act 1994, well-known trademarks are exclusively defined. An example of such a mark would not be limited to a particular geographical area but has a strong reputation in the industry. An extensive public section of society has accepted and is widely acquainted with it. Another important criterion is the time the trademark has been used. When declaring a well-known trademark, section 11(6) discusses the factors to be considered while determining. In this regard,
- A trademark’s recognition or knowledge amongst the relevant section of the public, specifically in India, is a result of the promotion of that trademark, which may include information regarding the widely known trademark.
- There should be a determination of where, when, and how long you used the trademark.
- Any trademark and its benefits, including advertising, publicity, and presenting the goods or services to which the trademark relates at fairs or exhibitions of the goods or services to which the trademark relates, during its duration, extent, and geographical region.
- A trademark registration or publication reflects the use or recognition of that trademark to the extent that it represents the duration and geographical area of the registration or publication.
- Users should review a trademark and its benefits application to determine its success in enforcing its rights and, more specifically, to determine how far it has been recognized as a well-known trademark, whether by a court or Registrar, based on the exercise of those rights.
The final decision on whether or not a well-known trademark rests with the courts and adjudicating authorities (Registrars). A well-known trademark is distinguished from an ordinary trademark in that it receives a wide range of protection, which is different from that of a typical trademark. An in-depth analysis of this issue will be provided in a subtopic that follows and is discussed in more detail in section 11(2) of the Act.
The advantages of well-known trademarks and its benefits
As a result of acquiring the status of a well-known trademark and its benefits can be enjoyed, among them are the following:
- In India, as well as around the world, it receives robust legal protection.
- As a result of the brand’s goodwill and reputation being protected on a pan-Indian basis, it gets the opportunity to expand across goods and services.
- Whenever impersonation or deception is committed, it will be treated firmly and carry serious legal consequences.
- In the marketplace, the brand is regarded as one of the most popular and renowned in the industry.
- In the unlikely event that the mark is subsequently registered for a product or service even remotely similar, the application is rejected.
The Indian trademark system
There is a Trademarks Act 1999 in India that protects the trademark rights of registrants. After India signed the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights), the Trade-Related Aspects of Intellectual Property Rights Act was primarily introduced to fulfill India’s international obligations. Regarding trademark and its benefits in India, their ownership has nothing to do with the person who has used them for the most prolonged period, unlike patents and other intellectual property rights.
Due to this, the concept of the ‘first-to-use’ trademark has taken over the concept of the ‘first-to-file’ trademark when it comes to trademarks.
The legal status of unregistered trademarks
Trademark and its benefits registration is not a requirement for the use of a trademark. Thus, even if there is no registered trademark for a product or service, the common law will help it by offering it protection under tort law, even though it is an unregistered trademark. Therefore, under the common law, passing off goods is an offense that is prohibited. The term passing off refers to the Act of one party making false claims about a person’s product or service and harming their reputation and goodwill. As per basic law, it is not permissible for one party to enrich themselves unjustly by exploiting another party’s labor. A party who steals the trademark and its benefits of another party and their goodwill will be deemed to have committed the same offense.
A court typically considers the following factors in a passing-off lawsuit:
- There must be a substantial amount of time that the aggrieved party has been using his trademark for.
- If there is some recognition of the plaintiff’s brand name in the market, whether the plaintiff’s merchandise or services have acquired distinctiveness and if people are aware of the trademark.
- There has been confusion in the minds of the general public as to whether the defendant has put its products or services on the same footing as the plaintiffs so that they would be treated the same way as the plaintiff’s goods.
Well-known marks are protected.
A trademark and its benefits is a recognizable name or design that is famous – it is known across the globe for being well-known amongst the general populace. According to the reputation of a mark on a national and international level, a mark is considered well-known. As a result of this Act, stiff penalties are imposed on those who misuse well-known marks. A similar trademark is also taken into account when it is registered.
Registered trademarks are protected by law.
In India, registered trademark and its benefits are protected in several ways over the course of their existence. Trademark specialists are convinced that registering the trademark is one of the best things a company can do for its brand. Although this is not a requirement, it is always a good idea to do so.
According to the Trademarks Act of 1999:
- Ensures that the right applicant will be the owner of the trademark once it has been registered.
- Protects the trademark from infringement by providing statutory protection under the law.
- By registering your trademark, you prevent others from using it illegitimately or for commercial purposes.
- Brings a lawsuit against the infringer when the need arises so that the user can protect the rights.
Although the trademark and its benefits remains protected under common law, the burden of proof for a claim involving an unregistered trademark is higher for the plaintiff than it would usually be if the trademark were registered.
Recourse to the courts
After a business has gone through the more straightforward process explained, the company may also approach the courts in the country if the trademark is recognized as a well-known mark. An old tradition was for companies to apply for a trademark in a Court of Law by filling out the TM-M form and taking it along with them.
In India, how to obtain a well-known trademark.
Following the enactment of the Trademark Rules 2017, a user must submit any new application to the Registrar of Trademarks with a prescribed fee of Rupees 100,000. Based on specific criteria and in light of the submissions, the Registrar will then decide on the application’s merits and issue his or her decision based on the case statement, the relevant documents, and the evidence presented.
A FINAL NOTE
It is no small achievement to get a company to achieve the status of a well-known trademark and its benefits, as it reflects well on the company’s credibility, its image in the market, and its goodwill in the community. We are firmly against any subsequent imitations, no matter how near-identical they seem, and we take action wherever necessary to stop them. The threat of legal action also motivates research and development, which could lead to a new product or service that would be of great value in the future, as well as for protecting those products through legal actions.
Getting a trademark status is not easy; on top of that, a piece of good advice will be provided by a law firm that you can trust and that can give you the best advice possible. We tailor these services to meet the specific needs of your business, and we are sure that you will get the best advice and assistance you need to grow your business and achieve the special recognition of your trademark as quickly as possible.
Frequently Asked Question
Q: What is a well-known trademark?
A: A well-known trademark are those trademarks which recognized by the peoples due to its exceptional quality, popularity, and extensive market presence.
Q: How is a trademark designated as “well-known”?
A: The designation of a trademark as “well-known” varies from country to country. Generally, it is determined based of level of public knowledge and recognition, the duration and geographical extent of its use, and the level of promotion and investment made by the trademark owner.
Q: What are the benefits of having a well-known trademark?
A: There are several benefits associated with having a well-known trademark. Enhanced Brand Value, Competitive Advantage, Increased Customer Loyalty, Legal Protection, Expansion Opportunities, Licensing and Franchising Potential.
Q: Can a trademark lose its “well-known” status?
A: Yes, registered trademark fails to maintain the level of popularity and reputation it formerly had, it may eventually lose its “well-known” status. The trademark may lose its well-known status due to factors including a declining market presence, a decline in consumer trust, or lack of ability to effectively promote and defend the mark.
Q: How can a trademark owner protect and maintain the well-known status of their trademark?
A: To protect and maintain the well-known status of a trademark, the owner can take several measures. Vigilant Enforcement, Brand Promotion, Quality Control, International Registration, Trademark Watch Services
Q: Are there any specific legal provisions for well-known trademarks?
A: Yes, many countries have specific legal provisions to protect well-known trademarks. For example, the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provide guidelines and regulations for the protection of well-known trademarks on an international scale.
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- 17 July 2023
- Written By Archana Hayaran
- Associate Client Relationship
- Review By: Advocate Anupam Agrawal
