Determination Of A Well-Known Mark A Conundrum

Till the New Rules, the only way for a proprietor of a trademark to include its mark in the list of well-known marks was on the basis of the orders of Court/Registrar/IPAB

Until the Trade Marks Rules, 2017 (New Rules), the Registrar of Trade Marks (Registrar) would consider including a mark in the list of well-known marks under Section 11(8) of the Trade Marks Act, 1999 (Act). Thus, until the New Rules, the only way for a proprietor of a trademark to include its mark in the list of well-known marks maintained by the Registrar was on the basis of a decision passed by an authority like the Indian Court or Registrar or the Intellectual Property Appellate Board (IPAB) determining its trademark as a well-known mark.

The New Rules provide a mode of inclusion of a mark in the list of well-known marks. Under the New Rules, an application for determination of a mark as a well-known mark can be filed by a proprietor without waiting for a decision from one of the above-mentioned authorities. Under Rule 124 of the New Rules, a proprietor can file an application for determination of its trademark as a well-known mark supported by various documents listed as per the guidelines issued by the Controller General of Patents, Design and Trade Marks along with the payment of prescribed fees. Incidentally, while the New Rules require filing of such prescribed application in spite of a mark being determined as a well-known mark by a Court/Registrar/ IPAB, there is no provision limiting the power of the Court to determine a mark as a well-known mark. At this juncture, the following decisions of the Delhi High Court add to the enigma on rights of the Court to determine a mark as well-known.