We all know that the Trademarks registration in India is governed under the Trade Marks Act, 1999 read with the Trademark Rules, as amended from time to time.
Here we are going to discuss the “Well-known trademark” Registration in India.

What is a trademark?

A trademark can be a word, logo, tagline, phrase, symbol, design, brand, or a combination of these things that identifies your goods or services. Trademark registration in Chandigarh, often called Intellectual Property Rights is becoming increasingly important since the customer identifies the goods or services with the brand names/trademarks of the Corporations/entities/firms.

How to do Trademark Registration in India?

One can file the trademark application either offline with the office of its respective jurisdiction or an application can be filed online at www.ipindia.gov.in. Form TMA has been prescribed under the Act.

Why trademark registration is important?

1. Trademarks are the most valuable intangible assets of any company/entity.
2. They provide a unique identity to the entity.
3. They have the potential to generate huge returns to the Company, whether in terms of the product market or on licensing or assignment of the mark.
4. They offer legal protection to the Company, nobody can use the trademark which is registered in the name of an individual/entity.

What is a Well-known trademark in India?

As per Section 2(zg) of the Trademarks Act, 1999, a well-known trademark, to any goods or services means a mark that has gained enough recognition among a substantial public segment who utilize those goods or services that the use of such mark about other goods or services would likely to be taken by the public as if there is some connection between those goods/services and the person using the mark with the first-mentioned goods/services.

What factors are considered while determining a Well-known mark?

Section 11(6) Section 11(7) and Section 11(8) of the Trademarks Act, deals with the criteria to be considered while determining a well-known trademark, which is as under:-

1. the knowledge or recognition of that trademark in the relevant section of the public.
2.  the extent, geographical area, or duration of any use of that trademark;
3. the extent, duration and geographical area of any promotion of the trademark.
4.  the geographical extent and duration of any registration or any application for trademark registration under this Act to the extent they reflect the use or recognition of the trademark;
5.  the record of successful enforcement of the rights in that trademark.

The Registrar shall take into account the following factors while determining whether a trademark is known or recognized in a relevant section of the public-

1. the number of potential or actual consumers of the products or services.
2. the number of individuals who are a part of the distribution channel of the products or services.
3. the business circles involved in the products or services.

When the trademark has been considered to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration.

How to acquire the status of a Well-known mark in the Trademark Registry in India?

Rule 124 of the Trade Marks Rules, deals with the procedure.

Any Entity can apply for acquiring the status of a Well-known mark in Trademark Registry records, provided it fulfills the criteria as specified hereinabove, by filing the form TM-M alongwith the Statement of case and all evidence and documents in support of the claim. Thereafter, the Registrar may call for such documents, as he thinks fit and he may invite objections from General public to be filed within 30 days of the date of invitation. In case, no objections are received, the trademark shall be published in the affordable trademark services.

Journal and included in the list of Well-known marks maintained by the Registrar.

What is the fees towards filing form TM-M?

Rs.1,00,000/- per mark.

What is the approximate time involved in getting registration of Well-known mark?

18-24 months.

What are the benefits of getting the status of a well-known mark?

The Trade Marks Act, 1999 protects well-known marks in two ways:-

1. Does not allow registration of any similar mark
2. Action against misuse of any well-known mark

How can we get to know whether our trademark is registered under the category of Well-known Marks?

A list of Well-known marks in India can be accessed at https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx

Can the status of registered Well-known trademark be changed thereafter?

Yes, a well-known trademark application can be removed from the list of well-known marks, if the Registrar is satisfied that such trademark has been erroneously or inadvertently included or it is no longer justified to be in the list of Well-known marks.

Now the next immediate question that comes to your mind is how to register our Well-known trademark?

Brij Agnihotri and Associates, Company Secretaries, Registered Trademark Agents, Registered Valuers (SFA) are experts in legal matters corresponding to the corporate realm. They can offer you assistance as well as guidance and services such as that of company secretary, as well as in matters pertaining to company incorporation, and LLP registration, apart from trademark registration. If you are looking for trademark agents for filing your trademarks / logos / brands, you must look no further. Their services are offered at a very feasible price which are in no way taxing or burdensome to your pocket, and solve your problem without extorting humongous sums of money from you. They help you get the ‘™’ symbol which stands for applied trademark or the ‘R’ symbol which shows that your product or services are registered. At Brij Agnihotri & Associates, quality services are assured and customer satisfaction is the priority.