June 01, 2017     

India: The IP Office releases Guidelines for filing of Well-Known Trademark Applications

 

The Department of Industrial Policy and Promotion (hereinafter referred to as the ‘DIPP’) on March 6, 2017 notified The Trade Mark Rules, 2017, which replaced the erstwhile Trade Mark Rules, 2002. A copy of the said notification can be found over here.

 

Amongst a host of other changes, for the first time, the new Rule empowered the Registry to declare a mark as well-known if any applicant or proprietor is interested. As per Rule 124 of the said Rules, the interested applicant/proprietor has to file an application through Form TM- M, and on receipt of any such application the Registry shall determine whether the mark is well-known or not based on the provisions of Section 11 (6) to Section 11 (9) of the Trademarks Act, 1999. In addition to that, prior to making a decision, the Registry is also obligated to invite objections from the general public.

 

This is a conspicuous improvement on the earlier procedure for getting a mark declared as well-known. Previously, a mark was only declared well-known if it was decided so in a contentious matter. However, for the first time the Rule vests the authority with the Registrar who shall determine whether a mark is well-known or not after receiving a request of such from an interested proprietor on payment of INR 1,00,000 ( USD1600 approx.).

 

Further, on May 22, 2017, the Office of the Controller General of Patent, Designs and Trademarks (hereinafter referred to as the ‘CGPDTM’) released a public notice for the general convenience of all applicants laying down guidelines for an application under Rule 124. The checklist for filing such an application are as follows –

  • The application shall be filed only online through compressive e-filing services of trademarks made available on the official website i.e. www.ipindia.nic.in 

  • The application should be accompanied with the following documents –

    1. Statement of case describing the applicant’s rights in the trademark and describing the applicants claim that the trademark is a well-known trademark.

    2. Evidence in support of the applicant’s rights and claim viz., evidence as to use of trademark, any applications for registration made or registration obtained, annual sales turnover of the applicant’s business based on the subject trademark duly corroborated, evidence as to the number of actual or potential customers of goods or services under the said trademark, evidence regarding publicity and advertisement of the said trademark and the expenses incurred therefor, evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad.

    3. Details of successful enforcement of rights relating to the said trademark in particular extent to which trademark is recognized as well-known trademark by any Court in India or Registrar of Trademarks.

    4. Copy of the Judgment of any court in India or Registrar of Trademarks, wherein the trademark is determined as well-known trademark,

    5. The size of the document submitted along with statement of case as evidence/supporting document should be in PDF format with resolution of 200 * 100 dpi on A4 size papers and total file size shall not be exceed the limit of 10 MB.

  • After the receipt of the application, the office will consider the claim of the applicant on the basis of documents submitted. /span>

  • The office may publish the details of trademark proposed to be included in the list of well-known trademarks.

  • Any person, who wants to object the inclusion of the trademark in the list of well-known trademarks, may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents, if any.

  • CCopy of the objection may be communicated to the applicant for comments within stipulated time.

  • Office will communicate the decision in respect of the objections to the parties concerned.

  • Final decision of the office regarding inclusion of the trademark in list of well-known trademarks will be communicated to the applicant.

  • In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website.

Moreover, before determining a trade mark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection. /span>

 

Nonetheless, the Registrar may, at any time remove the trade mark from the list of well-known marks after giving an opportunity of hearing to the concerned party if it is found that a trade mark has been erroneously or inadvertently included in the said list.

 

 

 

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