Provision Of Well Known Mark Under Rule 124 Of The Trademark Rules 2017

Author:Ms Sonal Joshi
Profession:H K Acharya & Co

The new trademark rules 2017 have replaced the Trademarks rules 2002. The most noticeable changes brought upon by the 2017 rules are:

Official filing fees has been revised and changed. The forms for filing trademark are reconsolidated and categorized anew. Processing and application procedures are expedited, and One of the potentially controversial additions is RULE 124 of the new rules. RULE 124 of Trademarks Rules 2017: says in the simplest words that an owner of the trademark may approach the Registrar of the Trademarks and apply to have their Trademark to be declared as well-known mark. The above application needs to be supported with documents showing all the evidences that the said trademark is known and recognized and thus a well known mark along with an official fees of 1,00,000 INR as is mentioned in entry 18 of Schedule 1. Also, if the owner wants to have both the word mark and logo mark recognized as a well known mark separate applications need to be made.

The factors that help in deciding whether a word mark is to be categorized as well known work marks are as follows:

That the mark is known and recognized by the relevant section of the public. Duration/ extent/ geographical area of promotion of the mark in question. Duration/ extent/ and geographical area of them mark in use. Registration whether obtained in respect to the said mark. Successful enforcement actions taken in regards to making the mark to be known by all those in the relevant section of the public. Section 11(8) says that the mark shall be registered and recognized by the registrar. Till the introduction of the 2017 trademark rules, the declaration of mark to being a well known mark was through judgments and observations made during court proceeding, now the new trademark rules have come out and thus one curiosity does appear after the rules have been passed being:

What about those marks that have been declared well known marks by the Courts before Trade Mark rules 2017, what is their status now, that the new rules of trademark 2017 are in execution? This has been cleared by the Public Notice issued by the Controller General of Patents, Design, and Trade Marks on 22.05.2017 where in they've state guidelines to be followed in respect to Rule 124, in this they have given a list of documents that shall be attached to the application. In this they've clearly stated that a copy of the judgment of any court or Registrar of trademarks needs to be...

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