On August 15th 2022, the Office of Controller General of Patents, Designs and Trade Marks (“CGPDTM”) notified a list of trademarks which would be added to the list of Well-known Trade Marks in the Trade Marks Journal No: 2065. The Registrar of Trade Marks considered requests received under Rule 124 of the Trade Marks Rules 2017, which allows any trade mark owner to file a request in Form TM-M requesting the Registrar to declare their trademark as ‘well-known’. This list of well-known marks comprised 20 trademarks including a few famous brands such as Maggie, Paytm, Fevicol, Swiggy, Gillette, NOKIA, and so on.
What are well-known trademarks?
According to Section 2(zg) of the Trade Marks Act, 1999
“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.
This section provides that a well-known trademark in relation to any goods or service refers to a mark which has transformed in such a way that a significant segment of the public relates the said mark to a particular product or service and that the use of such a mark by any other person for any similar or other unrelated goods or service, is likely to indicate a connection with the former.
In simple words, if you spot a ‘Maggie smart electric kettle’ in the market tomorrow you would likely buy it thinking it is being sold by the same company which makes Maggie Instant Noodles. To give another example, if a screen guard gets launched in the market under the name Fevicol you would buy it assuming it to be sold by the company which sells adhesives under the well-known brand name Fevicol. Such is the power wielded by a brand which comes under the umbrella of being listed as a well-known trademark. Not only that, once a mark gets recognised as well-known by the Office of GCPDTM the protection of the marks gets extended to goods and services across all classes.
Additionally, the Office of CGPDTM via a public notice dated May 22nd 2017 issued general guidelines with respect to well-known trademarks. These guidelines are available on the IP India Website at: https://ipindia.gov.in/writereaddata/Portal/IPOtherNotice/1_31_1/Public-Notice.pdf (last visited on September 13th, 2022)
The complete list of existing well-known trademarks can be accessed at: https://ipindia.gov.in/writereaddata/Portal/Images/pdf/well-known-trademaks-updated-newone.pdf (last visited on September 14th, 2022)
What are the benefits of having a well-known trademark?
There are a plethora of benefits of having a brand which the Indian IP Office recognises as a well-known trademark, such as:
- The protection granted extends to all classes regardless of the differences in the field of business, goods or services,
- Prevents unfair use of the mark’s reputation,
- Prevents any harm to the reputation of the marks such as dilution by blurring or tarnishment,
- Avoids confusion amongst customers,
- Overall brand protection across the country, and so on.
What are the factors considered while determining a well-known trademark?
While determining if a particular mark is well-known, there are various factors which are considered, such as the:
- Knowledge or recognition of the trade mark in the relevant section of the public,
- Knowledge in India obtained as a result of promotion of the trade mark,
- Duration, extent and geographical spread of use of the trade mark,
- Duration, extent and geographical spread of promotion of the trade mark,
- Record of its successful enforcement and recognition as a well-known trade mark, and forth.
Additionally, while determining whether a trade mark is known or recognised in a ‘relevant section of the public’ as mentioned above, the Indian IP Office considers—
- 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; and
- the business circles dealing with the goods or services, to which that trade mark applies.
Apart from the Office of CGPDTM, at times even the courts in India while dealing with a trademark case declare a particular to be well-known which also gets added to the list. The well-known trademark that made it to the list during one of the earliest trademark disputes on this subject was the mark “PHILIPS” by the proprietor Philips NV, Netherlands. This was recognised as a well-known trademark by the Punjab and Haryana Court in the year 1983 (reported in AIR 1983 P&H418).
Trademarks that recently made it to the List
The following marks were added to the list of well-known trademarks published by the Indian IP Office:
| SNO. | TM APPLICATION NO. | MARK | APPLICANT DETAILS |
|---|---|---|---|
| 1 | 816398 | V-GUARD (Relating to stabilizers, UPS systems, water heaters, water pumps, motor starters, solar water heaters, ceiling fans and electric wiring cables.) | V – GUARD Industries Limited (Kerala) |
| 2 | 816423 | YONEX (Relating to Sports equipments, shoes, apparels, bags and accessories.) | Yonex Kabushiki Kaisha (Tokyo, Japan) |
| 3 | 816407 |  (Relating to Design, manufacture, sourcing and distribution of luggage, business and computer bags and outdoor and causal bags and travel accessories.) | Samsonite IP Holdings S.A.R.L.(Luxembourg) |
| 4 | 766507 | PAYTM (Relating to Online Platform for utility bill payments, recharges, ticketing, hotel booking and other financial services.) | One97 Communications Limited (New Delhi) |
| 5 | 764029 | ALLIANZ (Relating to insurance, finances and other financial related activities.) | Allianz SE (Munich, Germany) |
| 6 | 765282 |  (Relating to insurance, finances and other financial related activities.) | Allianz SE (Munich, Germany) |
| 7 | 816408 | CEAT (Relating to wide range of products, inter alia, Radials for passenger vehicles, small commercial vehicles, two wheelers, light commercial vehicles, heavy commercial vehicles, farm vehicles, off-the-road vehicles.) | Ceat Limited (Mumbai) |
| 8 | 739611 | SIMCO (Relating to wide range of products, inter alia, hair fixers, hair gels, hair shampoos, perfumery, cosmetics, hair lotions, bleach creams preparations and moisturizers and other allied and cognate goods.) | Simla Chemicals Pvt. Ltd. (New Delhi) |
| 9 | 816435 |  (Relating to Air Coolers) | Symphony Limited (Ahmedabad) |
| 10 | 816482 | KHADI (Relating to Textile and consumer products and services such as promoting research in production techniques, supplying raw material and tools to producers, quality control and marketing products.) | Khadi and Village Industries Commission |
| 11 | 816484 | IBM (Relating to Computer Hardware, Software and Technology Solutions.) | International Business Machines Corporation (New York, USA) |
| 12 | 816485 | ACC (Relating to Cement and Ready-Mix Concrete.) | ACC Limited |
| 13 | 816489 | FEVICOL (Relating to Consumer and Industry Speciality Chemicals.) | Pidilite Industries Limited (Mumbai) |
| 14 | 816496 |  (Relating to Consumer and Industry Speciality Chemicals.) | Pidilite Industries Limited (Mumbai) |
| 15 | 816505 | SWIGGY (Relating to Technology driven solutions in food and restaurants industry.) | BUNDL Technologies Private Limited (Bangalore) |
| 16 | 816506 | GILLETTE (Relating to Personal Grooming products such as blades, razors, gels, shaving foams, toiletries, body sprays, deodorants, etc.) | The Gillette Company LLC |
| 17 | 816491 |  (Relating to Educational Institution.) | Indian Council of Agricultural Research [ICAR] (New Delhi) |
| 18 | 816486 | MAGGI | Société des Produits Nestlé S.A. (Vevey, Switzerland) |
| 19 | 816500 | NOKIA | Nokia Corporation (Espoo, Finland) |
| 20 | 816494 | ISKCON | International Society for Krishna Consciousness (Mumbai) |
To get some further insights into well–known trademarks at: https://www.bananaip.com/ip-news-center/an-insight-into-well-known-trademarks/
And to read about the recent developments and principles with respect to the law of well-known trademarks in India visit: https://www.bananaip.com/ip-news-center/recent-developments-principles-governing-well-known-trademarks/.
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Disclaimer
Please note that the content that forms part of this update has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified the decision published. You may write to contact@bananaip.com for corrections and take down.
