India: Well-known Trade Marks
An important change regarding the protection of well-known trade marks in India has been introduced by the recent reform of Indian Law: it is now possible to request an official declaration of the well-known status of a trade mark.
Previously a trade mark could have been declared as ‘well-known’ only by a Court, during legal proceedings. Under the reformed law, the requirement of obtaining a declaration only through legal proceedings has been removed and it will be possible to file a statement of case and supporting evidence direct at the Indian Trade Marks Registry.
The protection afforded to a well-known trade mark will be for all the goods and services covered by the declaration, irrespective of the actual use made of the trade mark. Furthermore, a well-known trade mark declaration will be a valuable asset to protect the trade mark from “dilution”.
The criteria considered by the Registrar in determining the well-known status of a trade mark will include:
- the awareness or recognition of the trade mark developed as a result of its promotion;
- the duration, extent and geographical area of use of the trade mark;
- the record of successful enforcement of the rights in the trade mark; and
- the number of actual or potential consumers of the goods and services and the number of persons involved in the chain of distribution of the goods or services concerned.
Use and registration of the trade mark in India as well as its recognition among the Indian public will not be considered as necessary conditions for a declaration that a trade mark is well-known.
For further details, please contact your usual WP Thompson attorney.