PROTECTION OF WELL-KNOWN TRADEMARKS

Section 9

Absolute grounds for refusal of registration

Section 9(1) lays down the basis on which a trademark cannot be registered. The basic grounds include any trademark:

1. Which is devoid of any distinctive character, or
2. Which contain exclusively of indications which may designate the certain qualities and descriptions of the goods or services, or
3. Which contain indications which have become customary in the current language or bonafide practices of trade

Here, the proviso stated that the trademark should not be refused, if, before the date of application, the trademark has become a well-known mark.

Section 11

Relative grounds for refusal of registration

Section 11(2) lays down that any trademark which:

1. Is identical or similar to an earlier mark
2. Is to be registered for services or products which are not similar to those for which the earlier mark is registered in the name of the different proprietor

Shall not be registered for to the extent, the earlier mark is a well-known trademark

The registration is not allowed in this case because the later mark would cause unfair advantage in its favour due to the goodwill and reputation of the well-known trademarks.

Section 11(4) talks about the earlier trademark and how the proprietor of such consents to the registration

Mentioned in Section 11(4)(b) is that A trademark which is entitled to protection as a well-known trademark on the date of the application for registration of the trademark in question or, where applicable, of the priority stated in respect of the application.

Section 11(6) mentions that the Registrar shall take into account the following while determining what a well-known trademark

The factors are:

1. Knowledge or recognition of the trademark in the relevant segment of the public, including knowledge acquired in India as a result of the promotion of the trademark;
2. the period, extent and geographical area of any use of the trademark;
3. The span, scope and geographical area of any trademark promotion, whether ads or advertising and presentation, at trade fairs or exhibits of products or services to which the trade mark applies.
4. the period and geographical area of any registration or application for registration of the trade mark under this Act to the degree that it represents the use or acknowledgment of the trade mark;
5. The record of the successful protection of the rights in that trademark, in particular the degree to which the trademark has been accepted as a well-known trademark by a registrar on record or any court.

Section 11(8) says that where a trademark has been decided by any court or Registrar to be well recognised in at least one relevant section of the public in India, the Registrar shall consider that the trademark is a well-known trademark for registration.

Section 11(9) lays down the conditions for determining whether a trademark is a well-known trademark.

The conditions are that the trademark:

1. Has been used in India
2. Has been registered
3. Application has been filed in India
4. Or the trademark is:

1. Well known in
2. Has been registered in
3. Application is filed in

Jurisdiction other than India

5. Mark is well-known to the public at large

Section 11(10) mentions that When considering the application for registration of a trademark and the opposition filed in support of it, the Registrar shall consider two clauses.

Section 11(10)(i) says to protect a well-known trade mark against the identical or similar trademark.

Section 11(11) says that where a trademark has been registered in good faith disclosing relevant details to the Registrar or where the right to use a trademark has been obtained in good faith previous to the commencement of this Act, nothing in this Act shall impair the validity of the registration of that trademark or the right to use that trademark on the basis that that trademark is compatible with that of the Registrar.

Section 36

Saving for words used as name or description of an article or substance or service

Section 36(1) says that The registration of a trademark shall not be deemed to have been invalid on the sole grounds of any usage after the date of registration of any term or word included in a trademark or consisting of the name or description of an item or product or service.

PROVIDED that the well-known and well-established use of the said term as the name or description of an article or substance or service by an individual or persons engaged in trade therein shall not be used in relation to products or services related in the course of trade with the owner or registered customer.

of a trademark or (in the case of a certification trademark) in respect of products or services approved by the owner

Rule 124

Determination of Well-Known Trademark by Registrar

Rule 124 lays down the rules by which the registration of a well-known trademark is done.

Rule 124(1) says that any entity can, as is well known, order the Registrar to establish a trademark. In order to do so, it must file an application in Form TM-M and pay the charge as set out in the First Schedule. Such a request shall be followed by a statement of the case, along with all the evidence and documentation relied on by the applicant in favour of his claim.

Rule 124(2) says that the registrar should take into account the provisions from sub-sections (6) to (9) of Section 11 of the Act.

Rule 124(3) says that the Registrar can call the documents as he thinks fit

Rule 124(4) says that the Registrar may invite complaints from the general public to be lodged within thirty days from the date of the invitation to make such an objection.

Rule 124(5) is where the trademark, if, determined as a well-known trademark, should be published as Trademark Journal and in the list maintained by the Registrar.

Rule 124(6) mentions that the registrar may remove the trademark from the list if the trademark has been erroneously or inadvertently included in the list.