“ Agnihotri & Jha Associates® is known for seeking successful well known Mark for its client
Agnihotri & Jha Associates® is a leading IPR law firm in India. It has had its presence in the field for close to two decades and has represented numerous clients. The team at Agnihotri & Jha Associates® has well qualified professionals who always put the best foot forward to protect the interest of their clients. The team is composed of competent lawyers as well as industry experts whose expertise is key in delivering quality services to the clients.
Meaning
Well Known Marks are a very important part of the IPR circle. They have a unique presence and over the years there have been numerous debates which were aimed at giving them a proper shape and scope in terms of their operation. Protection of the Well Known Marks is key, there have been numerous instances of infringement and several leading cases have been decided not only in India but internationally in various jurisdiction with an objective to protect interest of the right holders.
Fundamentally, the term Well Known Mark means any mark that has a substantial use amongst the public and use of the mark may easily draw inference to the owner, goods or service rendered. Popularly in India, most of the bottled water is recognized by the name of Bisleri. Similarly, Amul is registered as a Well Known Mark and only the owners of the mark can use it. Therefore, the use of Well Known Mark by other party may create confusion amongst the minds of the consumer.
The protection given to well known marks is generally much higher when compared to the Trademarks. Generally, trademarks are protected in a given geographical location, but well-known marks have protection across the country. The Registrar will not approve the trademark application, if they are similar and overlap with the well known mark in the country. Even trans boundary well-known marks are also protected in India. For instance, Rolex is protected as a well-known mark in India, however, its origin is overseas.
Registration
The Trademark holder must make an appeal to the Registrar seeking grant of the status of ‘well known trademark’. The Registrar has the duty to protect the interest and rights of the well-known mark against the identical mark. When application is made for a mark similar to the existing well-known mark, the Registrar must evaluate the bad faith if any behind the applicant and make the relevant decision after considering all factors.
The remedies available for the infringement of well-known marks are very similar to the ones offered for infringement of trademarks in India. The owner of the mark can either take civil or criminal action against the infringing party. The owner may seek injunction, damages or search and seizure of the inventory of the infringing party.
The protection and remedies for infringement extend not only to domestically registered trademarks or well known marks but also internationally known marks. For instance, Gillette is a popular international grooming company. There was a company in India seeking to register on of their products under the same name. However, the same was not granted on the basis that it was an internationally known and densely consumed product in India as well. Therefore, the scope of protection and remedies extends to marks with trans-border repute.
The team at Agnihotri & Jha Associates® has a panel of lawyers and industry experts who specialize in filing for identification as a Well Known Mark, as well as defending claims. It is extremely crucial to protect such marks. Preventing infringement of such marks is critical and the Registrar has a vital role to play.
The Registrar must ensure that there are no marks registered if they are similar or identical to any existing well-known mark irrespective of the class of goods or services it offers. Further, the infringing mark must be seized and its use must be banned with immediate effect to curb the damage that may be caused to the original mark holder. The authorities must ensure that there are no made up or copy cat institutions established in an attempt to register desired marks. The applicant needs to be vigilant and must do their name search research with experts like ADJ Legal to ensure that there are no infringements.