The Path to ‘Well-Known’ Status for Trademarks: A Leap Forward

The enduring allure of the well-known mark – a status akin to the classic Onida tagline- Neighbour’s envy- owner’s pride. Though we don’t have Onida sets anymore, the essence of a well-known mark resonates with its distinction – it’s the envy of all and an owner’s pride. The trademark law also recognizes these aspects and there are special provisions for safeguarding a ‘well-known’ mark. This includes filing an application at the Trademark Registry as a ‘well-known’ mark and upon satisfactory evaluation, the TM registry may declare a mark as a well-known mark. This application is filed as almost a dossier, a meticulous compilation of all the relevant materials to demonstrate the reputation, recognition and positive public association of the mark.

However, the task assigned to the TM Registry is far from trivial. The TM registry is obliged to make an enquiry and examine in detail whether the mark indeed qualifies as ‘well-known’. Upon satisfactory evaluation, the registry may either declare the mark as ‘well-known’ outright or open it for opposition. Subsequently,  upon the disposal of opposition or after the lapse of the opposition period, the registry declares the mark as ‘well-known’ and publishes such declaration. 

Sounds quite simple, but it is not so simple in real life.

A mark that is declared ‘well-known’ enjoys an elevated level of protection under the Trademark law i.e. it can be protected from infringement against all types of users, whether they operate within the same class or span different ones (for different goods). 

In a recent case of Kamdhenu Ltd. vs. The Registrar of Trademarks, the Delhi High Court addressed the question of “what is the nature of evidence, and the documents which are to be filed by an Applicant for determination as a well-known trademark under Section 11 of the Trade Marks Act read with Rule 124 of the 2017 rules”.

The Hon’ble Court observed that on a bare reading of Rule 124, the words “evidence and documents” are used which would naturally include affidavits by way of evidence and other documents as well. Further, per Section 3 of the Evidence Act which states that “documentary evidence” includes all documents including electronic records produced for the inspection of the court; it can be inferred that the absence of an affidavit by way of evidence is not fatal to the application of a well-known trade mark if substantial “other documents” are produced. The court rightly held that: “mere affidavit by way of evidence without supporting documents cannot be sufficient for a well-known status. On the other hand, documentary evidence without an affidavit can still establish well-known status of the mark.”

This landmark ruling of the Delhi High Court emphasizes the need for a more balanced and practical approach to the evaluation of well-known trademark status, moving away from stringent procedural adherence and easing some existing hurdles.

The TM registry should take a leaf from this ruling, shifting its focus towards qualitative evaluation rather than rigid adherence to procedures, thereby preventing unnecessary delays in proceedings. It is estimated that there are more than 200  marks awaiting evaluation by the Registry. The Registry needs to adopt a more efficient approach which may potentially include holding meaningful inquiries, entertaining oral evidence and above all, accelerating the process.