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Protection Of Well-Known Trademark And Safeguard Against Registrability Of Identical Or Similar Trademark

The Indian Trademark laws provides for extensive and extraordinary protection to the trademarks that are well- known and protects and safeguards them from the vices of infringement under section 29 of the T.M. Act and passing off under common law principles and also under section 135 of the act.

The Act provides for 2 levels of protection 1)Against the registration of the similar mark under section 9 & 11, & 2) Action against the misuse of the well- known mark.
Provisions of well-known T.M under the Act, 1999
The Well known trademark is defined under section 2(1)(zg) defines as under:
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.

Provisions for safe-guard against against registrability of identical or similar Trademark

Under Section 09 of the act
11. Section 9(1)(a) Provides for the absolute ground for refusal of registration of the similar mark
The provision of this section provides protection to 'well known trademark' in such a way that, according to this provision the marks which are not of any distinctive character or are deceptively similar i.e. illusionary and misleading and are not capable of distinguishing the goods or services of one person from those of another person then such types of marks are not allowed to be registered.    

Under Section 11 of the act
1 1. Section 11(2) Protection of well-known marks across all classes
The provision of this section extends the ambit of protection provided to the well-known trademarks. According to this clause, well-known trademarks are to be recognised and protected across all the classes of goods and services.

2. Section 11 (6) Factors taken into consideration while determining the trademark as well-known
A Joint Resolution Concerning Provisions on the Protection of Well-Known Marks was adopted by WIPO in the year 1999 in order to protect the well-known marks from misuse and infringement, wherein various factors to determine a well-known trademark was enlisted. India being a member of World Trade Organisation, adopted these factors and enshrined it in clause 6 of Section 11 of the Trademarks Act.

These determining factors includes:
  1. Knowledge about the mark in relevant sections public;
  2. the duration, extent and geographical area in which the trademark is used;
  3. the duration, extent and geographical area in which the trademark is promoted with respect to the goods and services to which it applies;
  4. registration or application for registration of the trademark to the extent they reflect the use or recognition of the trade mark;
  5. the record of successful enforcement of the rights in that trade mark including the record stating that the trademark has been recognised as well known by any court or Registrar. 

Section 11 (9) � Conditions not required for well-known trademark registration
The section specifically mentions certain conditions which need not be required for the purpose of granting of well-known trademark. These conditions are:
  1. That the TM has been used in India
  2. That the TM has been registered;
  3. That the application for registration of the trade mark has been filed in India;
  4. That the trade mark is well known in or registered in any other jurisdiction other than India;
  5. That the trademark is well-known to the public at large in India.
It can thus be stated that for a trademark to be granted protection in India, it is not necessary that the mark owner has his business in India or its trademark is registered within India, nor is it required that the trademark is known to the masses as a whole. Thus, the particular provision provide for the concept of trans-border reputation of trademark.

Section 11 (10) Obligation on the Registrar
It is an obligation on the registrar that in case of a dispute and/or infringement the registrar must protect the interest of the well-known trademark against the identical ones and also must take into consideration and notice the ill intention and malafide motive of the complainant or the opponent.

Filing of a well-known trademark
With the incorporation of the new Trademark Rules 2017, a trademark owner can directly file an application for a well-known trademark to the Registrar. The said application of request should be accompanied with a statement of case, relevant documents, evidence and a fee of Rs. 1,00,000/- which has already been prescribed. It is also mandatory that the application is to be filed online through comprehensive e-filing services of trademark. Once the application is received, the application shall be considered in accordance to the documents submitted.
Remedies available for the trademark owner on misuse or infringement of well-known trademark
  1. Prevent registration of similar and deceptive similar trademark in respect to all class of goods and services.
  2. Request removal of infringing mark.
  3. Prevent incorporation of the trademark in the name or logo of any organization or corporate name.

Punitive damages:
Judiciary has opined in several cases that punitive damages shall prevent the infringers from using and causing dilution of well-known trademarks. In case of Time Incorporated v. Lokesh Srivastava [2005 (30) PTC 3 (Del.)], the court held that in Intellectual Property cases the court shall grant both punitive and compensatory damages. In the instant case, the court granted Rs. 5 lakh as punitive damage and Rs. 5 lakh as compensatory damage to the plaintiff for the reason of infringement.

Award Winning Article Is Written By: Mr.Jeet M Patel
Awarded certificate of Excellence
Authentication No: SP35652351653-02-0921

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