Well-known Trademarks – India Perspective

Till the present day, there are 81 declared well-known trademarks in the list maintained by the Trademark Registry in India.  By the introduction of one step procedure for determining a trademark as well-known, the list is expected to increase very soon.  This is the right opportunity for trademark owners in India or overseas to have their trademarks accepted and declared as well-known in India so that their trademarks are protected from being infringed or passed off by any unauthorized person.

INTRODUCTION

With the emergence of several social media platforms and innovative advertising ideas the reach of brands to the consumers have increased tremendously. Consumers are growing aware of trademarks associated with such famous brands. A huge amount of time, money, and resources are being spent by the owners of the trademarks to maintain their popularity in this globalized world. The tag of ‘well-known trademark’ in such a competitive market would be like attaining ‘MOKSHA’ for trademark owner as with the tag of the well-known trademark the basic aim for the protection of trademark shifts from the ‘consumer deception’ to preserving the distinctiveness of a trademark by protecting it against dilution and tarnishing. Hence, proof of confusion and deception, which is one of the traditional requirements of trademark infringement actions and passing-off actions, becomes a secondary consideration in the protection of well-known trademarks.

Indian Trademark Law recognizes well-known trademarks and has adopted the criteria that has been laid down under Article 6 of the TRIPS Agreement.

The statutory definition of a well-known trademark is given in the Trade Marks Act, 1999, (“Act”) is –

“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.

Further, there are provisions in the Act which lays down the factors which deals with the various matters concerning protection of well-known trademark. They are in the nature of explanations, which may arise in the context.

Under the Act, the Registrar of Trademarks (Registrar), while determining whether a trademark is a well-known trademark, will have to take into account any fact which he considers relevant for determining a trade mark as a well-known trademark including-

  1. the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;
  2. the duration, extent and geographical area of any use of that trademark;
  3. the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
  4. the duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trade mark;
  5. the record of successful enforcement of the rights in that trademark, in particular the extent to which the trademark has been recognised as a well-known trademark by any Court or Registrar under that record.

Also, while determining the knowledge and recognition of the trademark in the relevant section of public as mentioned above the Registrar will have to take account of-

  • 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 trademark applies.

The law is very clear regarding the fact that if a trademark 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 trademark as a well-known trademark for registration under the Act.

The Act states that while determining a trademark to be well-known, the Registrar shall not require as a condition that the trademark has been used or registered or has been applied for registration in India. It also states it is not essential that the trademark should also be well known to the public at large in India. Further, it is also not a condition that the trademark is well-known or a registered trademark or the pending registration or pending in any jurisdiction other than India.

Once a trademark is declared as well-known by the Registrar or by any courts, the trademark registry while dealing with any new trademark shall not register any similar or deceptively similar trademark that is identical or similar to the ‘well-known’ trademark across all classes of goods and services. For e.g. “SONY” has been declared as a well-known trademark under the Indian law which means that in India only Sony Corporation can use or register the mark “SONY” in any class of goods and services. Similarly, if there is an infringement proceeding, a ‘well-known’ trademark can be asserted against defendants dealing in entirely different goods or services. Therefore, a well-known trademark is of great importance to the trademark owners and has huge commercial implications.

A recent amendment in the Indian Trademark Rules, which have been notified as ‘The Trademark Rules, 2017’ (“Rules”), has created a lot of buzz amongst the trademark owners. A new procedure for filing of an application for the determination of trademark as well-known by the Registrar has been introduced. Prior to enactment of any such Rule, the process of declaring a trademark as well-known was solely decided by the Courts or Tribunals, resulting out of a full-fledged contested litigation or legal proceeding.  A mere claim that the trademark is well-known by the owner of the trademark is not sufficient.

Under the notified Rules, the trademark owner can now file an application for declaration of their trademark as a well-known trademark before the Registrar by making a payment of prescribed fee of INR 1 lakh (USD 1550 approx.). While reviewing such an application, the Registrar would determine whether the said trademark is to be considered as a well-known trademark or not based on the provisions laid down in the Act as mentioned above. Under the Rules the trademark owner can now directly proceed to protect his trademark as well-known, without initiating any infringement or opposition proceedings. Though the Rule does inflict certain duties on the general public as they are free to object and such objections are to be filed within 30 days from the date of invitation of such objection.

In order to further streamline the procedure for filing of an application for well-known trademark, a notice has been issued by the concerned authority. The notice includes certain requirements to be fulfilled by the applicant while filing the application for inclusion of a trademark in the list of well-known trademark.

The general guidelines include:

  1. The application should be accompanied with following set of documents:

Statement of case:

This should describe the applicant’s rights in the trademark and also the applicant’s claim that the trademark is a well-known trademark, clearly and in a proper manner.

Evidence in support:

Evidence in support of the applicant’s rights and claim is to be filed along with the application. In other words the application should be accompanied with:

  1. Evidence as to use of trademark.
  2. Any applications for registration made or registration obtained.
  3. Annual sales turnover of the applicant’s business based on the subject trademark duly corroborated.
  4. Evidence as to the number of actual or potential customers of goods or services under the said trademark.
  5. Evidence regarding publicity and advertisement of the said trademark and the expenses incurred.
  6. Evidence as to knowledge or recognition of the trademark in the relevant section of the public in India and abroad.

Details of successful enforcement of rights:

If there are any enforcement 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, those details have to be clearly stated.

Copy of the Judgment:

If there is a judgment by any Court in India or Registrar, where the trademark is determined as well-known trademark, such judgment should be given with the application under rule 124.

The size of the document:

The documents 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.

  1. After the receipt of the application, the controller will consider the claim of the applicant on the basis of documents submitted.
  2. The office may publish the details of trademark proposed to be included in the list of well-known trademarks.
  3. Any person, who wants to object the inclusion of the said trademark in the list of well-known trademarks, may file his objection in writing to the Registrar stating out the reasons clearly for his objection and also the supporting documents, if any exist.
  4. Copy of the objection will be communicated to the applicant for comments within stipulated time.
  5. Office will communicate the decision in respect of the objections to the parties concerned.
  6. Final decision of the office regarding inclusion of the trademark in list of well-known trademarks will be communicated to the applicant.
  7. 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.

Till the present day, there are 81 declared well-known trademarks in the list maintained by the Trademark Registry. By the introduction of one step procedure for determining a trademark as well-known, the list is expected to increase very soon.  This is the right opportunity for trademark owners in India or overseas to have their trademarks accepted and declared as well-known in India so that their trademarks are protected from being infringed or passed off by any unauthorized person. At the same time, the Registrar ought to follow a cautious approach while considering applications for determination of trademarks as well-known, since once a trademark is declared as well-known, it will preclude any other party from using such trademark (or even similar to it) in respect of other goods and services.

(The author would like to thank Nishi Shabana, Principal Associate of the firm for the valuable assistance in researching for this article.)

Investment Opportunities Special Economic Zones In India

Dipak Rao


22/08/2017  

The Export Processing Zone (EPZ) Policy implemented in 1965 during the ‘Import Substitution Industrialization’ (ISI) period included multiplicity of controls and clearances, absence of good infrastructure and unstable fiscal regime which paved way for the transformation of EPZs into Special Economic Zones. The Special Economic Zone (SEZ) policy in India first came into inception on April 1, 2000. The prime objective was to enhance foreign investment and provide an internationally competitive and compatible environment for exports. The policy aimed at promoting exports from the country and boost the economic growth by using tax and business incentives to attract foreign investment.

The Special Economic Zones Act was enacted in the year 2005 and became effective in the year 2006.

The Trademark Rules, 2017

Dipak Rao


23/03/2017  

Draft of the Trademark (Amendment) Rules, 2015 proposing amendment to Trade Marks Rules, 2002 was issued by Ministry of Commerce and Industry on November 19, 2015 and has finally come into force as of March 6, 2017 as the Trade Marks Rules, 2017 (“Rules”).

In order to simplify and streamline the whole trademark filing and prosecution process the numbers of forms have been reduced from 75 to 8. Previous forms have been replaced by 8 consolidated forms. The enormous heightening in the expense is much more than the alterations proposed in 2015 which is very apparent. The highlight of the proposed amendment is more than 100% percent hike in the trademark filing fee.

Some of the key highlights of the said amendments are as under:

Classification of Applicants:
The Trademark Rules, 2017 have divided the Applicants in two categories, Individuals/ Start-ups/ Small Enterprises and Others. ‘Start-up’ and ‘Small Enterprises’ are defined under the definition clause. It applies to both Indian and Foreign entities. This is again a major step by Government for promoting and facilitating the Starts up/Small Enterprises in protecting their brands, as a substantial rebate in the official fee has been given to Individuals/ Start-ups/ Small

Enterprises under the new Rules
Start-ups means an entity in India recognised as a startup by the competent authority under Startup India initiative, and in case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.

An entity will be considered as a Start-up if incorporated or registered in India, not prior to five years, with annual turnover not exceeding INR 25,00,00,000 in any preceding financial year and working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property. However, if any entity formed by splitting up or through reconstruction, of a business already in existence, it will not be considered as a start-up. Further, an entity shall cease to be a Start-up if its turnover for the previous financial years has exceeded INR 25 crore or it has completed 5 years from the date of incorporation/ registration. A Start-up needs to obtain certification from the Inter-Ministerial Board.

Small Enterprises are the enterprise engaged in the manufacture or production of goods, where the investment in plant and machinery does not exceed the limit of INR 10,00,00,000 and in case of an enterprise engaged in providing or rendering of services, where the investment in equipment is not more than the limit of INR 5,00,00,000. In case of foreign enterprise, an enterprise which fulfils the aforementioned criteria is eligible to be an applicant in the small enterprise category.

Hike in the fees:
There is substantial hike in the trademark registration cost under the new Rules. However, almost 50% discount has been given to the Applicant in the category of Individual, Start-ups and Small Enterprises. Also, with the sole rationale of expanding the online filings of trademarks, the revised Rules accommodate a 10% markdown on the official expense for Applicants who record the applications online in contrast with physical filings.

S.No Fee Payable For Fee after Amendment (INR)
E-Filing Physical Filing
1 Application for registering a trademark in one class
Individual, startups and small companies 4500 5000
Other entities 9000 10000
2 For  Notice of opposition or counter-statement in answer to a notice of opposition (Fee is for each class opposed or counter statement filed) 2700 3000
3 For renewal of registration of trademark in one class 9000 10000
5 Application requesting expedited examination
Individual, startups and small companies 20000
Other entities 40000
6 Amendment in a pending trademark application 900 1000
9 Application requesting inclusion of the mark in the list of well-known trade mark 100000
11 Application to register subsequent proprietor in case of assignment for each mark 9000 10000

Reduction in number of forms:
The number of forms used for filings various applications have been reduced from 74 to only 8 forms in totality. This reduction in the forms has been done to simplify the filing process.

The list of new forms is as under:

• TM A-Application for registration of any good/services
• TM M- Request for any amendment in application, grounds of decision, expedite examination, request for inclusion of a mark as well-known, authorization of an agent.
• TM R-All Renewal related matters
• TM C-Application for Search Certificate request
• TM O- All opposition matters
• TM P- Applications to dissolve association, assignment; amendment for description of goods/services, etc
• TM U-Application for Registered users, etc
• TM G- Applications related for Trade mark Agent

Registration of sound mark:
Before the notification of the said Rules, the practicality of registering sound marks was quite difficult. While applicants use to file applications to record sound marks by representing them graphically or by spelling out the tune, but now after the amended Rules there is an introduction of the facility for the registration of a Sound mark.
The amended Rules have provision for filing an application for registration of sound marks. A sound file in MP-3 format not exceeding thirty seconds along with graphical representation of its notation would be required to be submitted with the application. TM-A provides that in case of sound marks representation of specific musical notes must be submitted at the place provided for the trademark.

Statement of user in applications:
Prior to the amended Rules, if an application is filed claiming use prior to filing of an application then the Affidavit of use was submitted only when requested by the Examiner. However, under the amended Rules it is mandatory for the applicant to file an affidavit along with the supporting documents and evidence to claim use of the mark.

Assignment and Transmission:
Under the new Rules, a flat fee would be applicable on assignment of a registered trademark as mentioned in the table above, irrespective of whether the assignment request is filed within 6 months/12 months/ after 12 months from the date of assignment.

Expedited Examination of application:
There was a provision for filing of request for expedited examination of the application under the Trademarks Act and Rules, 2002. However, the expedited process ended with the issuance of the examination report by the trademark registry and the applicant filing a response to the same. The application thereafter is processed at a regular pace by the trademark registry. However, under the current amendment, expeditious processing of the application that is scheduling of show cause hearing, if required, the publication of the application and the opposition thereto, if any, till final disposal of the application all will be dealt expeditiously.

Request for expedited processing of application may be made for the registration of a trademark in Form TM-M mentioning the reason for expedited examination and on payment of fee which is 5 times the Application filing fees. Ordinarily, the application will be examined in 3 months from the date of Application, the response of examination report, advertisement of mark, opposition, if filed and hearing, if required to be scheduled will be considered early. Also, e-filing is mandatory if expedited processing of application is desired by the applicant.

Well Known Trademarks:
A notable highlight of the new Rules is inclusion of power given to the Registrar of trademark to review an application to include a mark in the list of well-known trademarks. The amendment gives discretionary power to Registrar of trademark to decide the criteria for inclusion of a mark in the list of well-known trademark. The amendment also empowers the Registrar to remove the trademark from the list if it is found that a trademark has been erroneously included the list. However, the most remarkable point is the cost required to be paid by the applicant for such inclusion of a mark in the list of well-known trademark. The official fee for the same is INR 100000.

Renewal:
Under the new Rules, the application for the Renewal of registration of a trademark may be filed within one year before the expiration of the registration of the trademark under FORM TM-R with the prescribed fee. Earlier, the Application for renewal could be filed only six months prior to the expiration of the trademark.

Electronic Service of Document:
The new Rules provides for electronic service of documents including all applications, notices, and statements, papers having representations or any other document, which means the Registry may send an official communication through email and it will amount to service of such document on Applicant/Opponent / Agent provided the email has been sent to the id given.

Opposition Proceeding
Rule 42 of the new Rules states about the procedure to be followed in case of opposition of trademark. Ordinarily, the Registrar shall serve a copy of the notice of opposition to the applicant within 3 months from its receipt at the office. But, if the applicant has already filed the counter statement on the basis of copy of notice of opposition available on the official website, the requirement of the service of such copy to the applicant shall be dispensed with.

In the repealed Rules extension of time was available to the Applicant with respect to filing of evidences in case of oppositions. However, in the new Rules no such extension of time is available.

The Trade Marks Rules, 2017 can be accessed at link provided below:

http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf

Revised FDI Policy Of India

Dipak Rao


22/08/2017  

The Government of India has bought out revised Foreign Direct Investment (FDI) Policy. Set out below is a snapshot of the recent liberalizations brought in the FDI Policy governing different sectors in India.

The policy prescribes the foreign investment caps in specified industrial sectors; these caps are subject to applicable laws/regulations; security and other conditionalities

FDI policy broadly categorizes industrial sectors as: Read More