02 May 2017
On 6th March 2017 the Indian government introduced new rules governing trade mark registrations.
One of the most interesting developments is the ability to now apply to protect a ‘well-known mark’. Companies can apply (via a form) for their mark to be recognised as ‘well-known’. This should mean that the issuing of opposition proceedings and/or infringement actions moving forward should be simplified and more cost effective.
In order to register a well-known mark, companies must provide evidence to support the claim. It must be proven that the mark is well recognised by the relevant public, and a record of successful enforcement of the mark must be provided. To indicate relevance it will also be important to show the marks’ geographical influence, and the number of potential customers of the goods or services. With sufficient evidence, it is possible to prove fame without the mark being in use in India, as long as it is deemed to be well-known among the relevant public. This is likely to be beneficial to foreign companies who have not yet used their mark in India, but require protection against infringement.
Once a trade mark is granted the status of a ‘well-known’ mark, it can be protected across classes. This one step process will then mean that evidence of use and reputation needn’t be provided every time an action is filed in India, thereby reducing cost and most likely timescales.
If you believe you could support a claim to a well-known mark and often have to enforce your mark in India, this could be a worthwhile exercise to reduce the administrative burden in the future.
Please do get in touch if this is of interest to you.
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