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Thursday, 8 December 2016

Indian Trade Marks Registry to widen its doors for recording “well known” marks


The role of recordation of well-known marks varies across jurisdictions. Against that backdrop, the step about to be taken by the Trade Marks Registry in India in connection with recording well-known marks is especially noteworthy. Kat friend Ranjan Narula, of RNA Intellectual Property Attorneys, describes what can be expected to shortly take place.

"Indian trademark law recognises well-known marks and it has adopted the criteria set out in Article 6 of the TRIPS agreement to determine if a mark is well-known.
However, the Trade Marks Act, 1999, had no specific provision to seek a formal declaration from the Trade Marks Registry regarding the well-known status of a mark. Since 2003, the Indian Trade Marks Registry has produced a list of marks that the courts have considered to be well-known, such as PHILIPS, INTEL, PEPSI, HONDA, OMEGA, MARS, HORLICKS, TATA, WOOLWORTH, TOSHIBA, SONY and CARREFOUR. The list is growing and currently has 81 marks. Brand owners have time and again pointed out that relying solely on a court ruling holding that a mark is well-known is a narrow interpretation of the criteria set out in section 2 (1) (zg) and Sections 11 (6), (7), and (9) of the Trade Marks Act. Thus, many brands may be unable to make it to the coveted list if they do not have a court ruling in their favour, even though the mark may otherwise be well-known. Amazon is one such example that does not appear in this list.

To address the concerns of brand owners, the Trade Marks Registry has proposed an amendment to the current Trade Mark Rules, 2002, to provide a specific reference to a declaration to record a mark as well-known. As s result, as per the proposed amendment, a rights holder will be able to make a request to the Registrar of Trade Marks to determine a trade mark to be a “well-known” mark. Such a request shall be accompanied by a ‘statement of case’.

In addition, the applicant shall be required to file relevant evidence and documents in support of such a claim, which may include evidence of use and promotional documents. The Registrar may fix criteria in this regard. It is apparent that the proposed amendment confers significant discretionary powers on the Registrar in determining whether a mark is ‘well-known’, based on the adduced evidence by the Applicant along with the statement of case. The provision also empowers the Registrar to remove a trademark that has been erroneously or inadvertently included in the list.

The trade marks Registry intends to charge hefty fees, as set out below, for an application for requesting inclusion of a mark in the list of well-known trademarks.

E-Filing INR 100,000; USD $1455 (approximate)

Physical filing INR 110,000; USD $1600 (approximate)

The new Rules are likely to come into force as early as next week. Still, the new Rules open certain matters, as various practitioners and brand owners have pointed out. Some of the concerns expressed by stakeholders are:
1. The basis for stipulating the criteria for determination of a well-known mark is not clear. The Trademarks Registry should have clearly spelled out that criteria laid down in Sections 2 (1) (zg) 11 (6) and (7) and 11(9) of the Act will apply.

2. It is not apparent whether ‘determination’ by the Registrar is required if the mark has already been recognized as well-known mark by a Court/Intellectual Property Appellate Board/Registrar in a contentious proceeding.

3. As there is already a list of well-known marks published by the Trademarks Registry, it is not clear whether a ‘new’ list shall be created or the existing list updated.

4. The fees, 100,000 Rupees for e-filing (approximately US$ 1455), and even more for physical filing, are unreasonable and without justification.

5. To safeguard rights of an aggrieved person, a procedure for publication and opposition/intervention against a determination that a trademark as well-known should be provided.
However, despite these issues, the Trademarks Registry is likely to proceed with the new Rules as currently set out."

A list of the recordals on the Trade Marks Registry, here.

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