Relevant provisions of Trademark Act and Rules, 2017:
1. Sections 11(6)-11(9), Trademarks Act, 1999: The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
- the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
- the duration, extent and geographical area of any use of that trade mark;
- the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
- the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
- the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a wellknown trade mark by any court or Registrar under that record.
- the number of actual or potential consumers of the goods or services;
- the number of persons involved in the channels of distribution of the goods or services;
- the business circles dealing with the goods or services, to which that trade mark applies.
Section – 11(7): The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
Section – 11(8): Where a trade mark has been determined 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 trade mark as a well-known trade mark for registration under this Act.
Section – 11(9): The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:—
that the trade mark has been used in India;
- that the trade mark has been registered;
- that the application for registration of the trade mark has been filed in India;
- that the trade mark—
a) is well known in; or
b) has been registered in; or
c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or
- that the trade mark is well-known to the public at large in India.
2. Rule 124, Trademarks Rules, 2017: Determination of well-known Trademark by Registrar:
(1) Any person may, on an application in Form TM-M and after payment of fee as mentioned in First Schedule, request the Registrar for determination of a trademark as well known. Such request shall be accompanied by a Statement of case along with all the evidence and documents relied by the applicant in support of his claim.
(2) The Registrar shall, while determining the Trademark as well-known take into account the provisions of subsections (6) to (9) of section 11 in the Trademarks Act, 1999.
(3) For the purpose of such determination, the Registrar may call such documents as he thinks fit.
(4) Before determining a trademark 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.
(5) In case the trademark is determined as well known, the same shall be published in the trademark journal and included in the list of well-known trademarks maintained by the Registrar.
(6) The Registrar may at any time, if it is found that the Trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.
Documents required as per the Guidelines issued by TM registry in 2017:
- TM-M Form with payment of Rupees 1 Lakh. (ONLY E-filing allowed)
- Statement of case describing the applicant’s rights in the trademark and describing the applicant’s claim that the trademark is a well-known trademark,
- evidence of use of the mark and annual sales turnover of the business using the mark;
- evidence of advertisements and publicity using the mark and related costs;
- evidence of actual or potential users of the mark;
- evidence of knowledge or recognition of the mark in India and overseas; and
- details of successful enforcement of rights with respect to the mark, if any, especially with respect to the mark being well known, including a copy of the judgment of any Indian court or registrar of trademarks determining the mark as being well known.
- The size of the document submitted along with statement of case as evidence / supporting document should be in PDF format with resolution of 200 X 100 dpi on A4 size papers and total file size shall not exceed the limit of 10 MB
- Any person, who wants to object the inclusion of the trademark in the list of wellknown trademarks, may file his objection in writing to the Registrar of Trademarks stating out the reasons for his objection with supporting documents, if any.
- Copy 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.