WELL KNOWN TRADEMARKS

What is a Well-Known Trademark?

A well-known trademark is a famous mark, logo, or symbol representing a brand and its hard-earned goodwill and reputation. A trademark becomes a well-known mark depending on the following:

• The brand value associated with it.
• The degree of recognition it receives in public at large.
• The duration, extent & geographical area of recognition.

In India, some of the familiar brands such as Whirlpool, Bisleri, Pepsi, Amul, Google, McDonald’s are recognized as well known trademarks in India.

Definition: As per Section 2(zg) of the Trademark Act, 1999, a well-known trademark is defined as “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.”

Application for Well-Known Trademark:

The Applicant shall have to file an application under Form TM-M under Rule 124 of the rules. It shall be filed with the Registrar for determination of a trademark as a well-known trademark.

Documents/ Information Required:

• Statement of case.
• Copy of judgment of any court or the Registrar wherein the trademark has been recognized as Well-Known.
• Details of successful enforcement of rights in case the trademark has been recognized as Well-Known by the court in India or TM Registrar.
• Evidence showing the Applicant’s right and justifying the claim. Such evidence shall include data/documents showing:
• Use of trademark, or any application filed for registration of trademark, or registration obtained;
• Annual sale turnover of the claimant’s venture;
• Actual or potential number of customers under the said trademark;
• Publicity and advertisement of the said trademark along with the expenses incurred thereof;
• Knowledge or recognition of the trademark in the relevant section of the public across the globe.

Recent Legal Regime:

‘ATOMBERG’ was declared as Well-Known by the Bombay High Court. CS (COMM) 323/2023 & I.A. No. 30248/2023.

The Bombay High Court has declared ‘AtomBerg’, in respect of home appliances, primarily fans, as a well-known trademark. The Court after considering the following aspects:

• The trademark ‘AtomBerg’ is inherently distinctive requiring the highest standard of protection;
• As a result, the Court stated that the protection of the mark surpasses Classes 7 and 11 in which it has been registered, making it eligible for well-known status.
• The trademark has acquired goodwill and reputation across India; and
• Plaintiff has taken appropriate steps to restrain infringements of the mark.

Pramah Lawmen Chambers is a full-service law firm with extensive expertise in Intellectual Property Law (IP Law), Corporate and Commercial Law services set up for provisions of professional services to the clientele at relatively pocket-friendly rates. We handle registration to infringement matters/litigation of conventional and non-conventional patents, trademarks, copyrights, and design portfolios for local and international clients alike. With us, businesses can ensure that their brand is protected and their legal rights are secured.