We previously reported the March 6, 2017 implementation of new trademark rules in India, which included the creation of a well-known marks list. The Office of the Controller General of Patents, Designs and Trademarks has now issued guidelines for filing such requests. The key guidelines are:
• Applications for a well-known mark declaration are to be filed via the Registry’s electronic portal.
• Applicants should submit the following documents:
o A “Statement of Case” highlighting the applicant’s rights in the mark and describing the claim of well-known character;
o Supporting evidence as to use of the mark, national / international applications filed or registrations obtained, annual sales/ turnover of the applicant’s business connected with the mark, actual or potential customers of goods/ services under the mark, extent of publicity and advertisement of the mark along with expenditure incurred, public knowledge or recognition of the mark in the relevant section of the public in India and elsewhere;
o Details of successful enforcement of the applicant’s rights, if any, related to the mark;
o Copies of any judgment by any court in India or by the Registrar of Trademarks finding that the mark is “well-known.”
• In the event that the Trademark Office determines, on review of the submissions, that the mark should be included in the Registry’s well-known marks list, the mark will be published for third-party objection. Such objections are due within thirty days of publication. Any objections raised will be communicated to the applicant for comments. Thereafter, the Trademarks Office will adjudicate the matter and communicate its final decision to the parties concerned.
• If the Trademarks Office determines that the mark is “well known,” a notification will be placed in the Trade Marks Journal and the mark will be included in the well-known marks list accessible at the Registry’s website.