Concept of Well Known Trademarks-An Overview

Concept of Well Known Trademark Trademarks are crucial for businesses as they establish ownership over specific terms, symbols, or designs associated with their goods and services. There are five main types of trademarks:
  • Product Trademark: This type of trademark is applied directly to the goods themselves, indicating their origin and supporting the company's reputation. Product marks are classified under trademark classes 1-34, which pertain to goods rather than services.
  • Service Mark: Service marks differentiate services provided by one entity from those offered by others. They serve to distinguish the source and quality of services.
  • Shape Mark: Shape marks protect the unique shape of a product, enabling consumers to associate it with a particular manufacturer or source. These trademarks focus on safeguarding the product's distinct shape rather than relying on words or symbols.
  • Collective Mark: Collective marks are used by members of an organization or group to identify their goods or services. They represent a certain level of quality or adherence to specific standards set by the collective group.
  • Sound Mark: Sound marks are distinctive audio elements that represent a product, service, or brand. To be registered as a sound mark, the sound must be unique and easily recognizable, allowing consumers to associate it with a specific source.
  • Well-Known Trademarks and Law in India

    Rolex Sa v. Alex Jewellery Pvt Ltd & Ors, CS(OS) 41/2008
    Because the defendant was using the name ‘Rolex’ on their bogus jewellery boxes, the plaintiff Rolex, a Swiss watch company, filed a lawsuit against the defendant for trademark infringement. The court forbade the defendant from using the plaintiff's trademark because it was well-known and highly esteemed and because doing so would lead to confusion among consumers who would incorrectly think that the jewellery was made by the plaintiff's company ‘Rolex SA’.
    Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, CS(OS) 2163/2010 & I.A. No.14225/2010
    The Hon'ble Delhi High Court forbade the defendant in this case from using the term ‘Microsoft’ since it was an internationally recognised and well-respected brand. The court went on to say that since the defendant would not be allowed to use the name of the well-known trademark as their own, since the plaintiff's trademark had unique goodwill and repute.
    Tata Sons Ltd. v. Manoj Dodia, CS(OS) No. 264/2008
    In this case, the defendant Manoj Dodia, the owner of Durga Scale Company, was sued by the plaintiff Tata Sons Ltd, a well-known manufacturer of cars and heavy vehicles, for the violation of the TATA trademark. The defendant operated a business that manufactured scales with the A1 TATA mark. The plaintiff sought rescue of the infringing equipment, a permanent injunction, harms, and an accounting. The defendant was forbidden by the court from utilising the plaintiff's trademark because he was trying to capitalise on the established brand name's goodwill. Due to the plaintiff's well-known and established brand name both within India and internationally, the court granted a permanent injunction as well as punitive damages totaling.

    Trademark registration is important and necessary for a business because:
    • It showcases your unique identity
    • It helps you build trust and loyalty among your customers
    • It offers legal protection for your brand’s identity
    • It is an asset in itself
    • It prevents unauthorised usage of your brand’s identity.

    What Are the Different Types of Trademark ?

    There are several different types of trademarks, each providing varying degrees of protection to distinguish products and services in the marketplace. The main types of trademarks include:

    • Word Mark: A word mark is a type of trademark that consists of a single word, phrase, or combination of words that serve to identify and distinguish the source of goods or services. Examples include "Apple" for computers and "Nike" for sportswear.
    • Design Mark (Logo): A design mark, also known as a logo, is a trademark that includes a unique design, symbol, or graphic element to distinguish products or services. Examples include the iconic "swoosh" logo of Nike or the golden arches of McDonald's.
    • Combined Mark: A combined mark is a trademark that combines both words and design elements. It typically includes a distinctive design along with a word or phrase. The design and word elements can be presented together, side by side, or integrated into a single unit. Examples include the FedEx logo, which combines the company name with an arrow hidden in the negative space.
    • Slogan or Tagline: A slogan or tagline is a short phrase or sentence used with a trademark to convey a brand's message or identity. Slogans can also be registered as trademarks if they are distinctive and used to identify specific goods or services. Examples include "Just Do It" for Nike and "I'm Lovin' It" for McDonald's.
    • Color Mark: A color mark is a trademark that consists of a specific color or combination of colors used to identify products or services. However, obtaining trademark protection for a color mark can be challenging, and it requires a high level of distinctiveness and recognition in the marketplace. Examples include the specific shade of brown used by UPS for its delivery trucks and the distinctive blue color of Tiffany & Co. jewelry boxes.
    • Sound Mark: A sound mark is a type of trademark that consists of a unique sound or audio sequence used to identify and distinguish products or services. Sound marks can include jingles, musical notes, or other distinctive sounds. Examples include the three-note sound mark used by NBC and the Intel Inside jingle.
    • Motion Mark: A motion mark is a type of trademark that consists of moving images or animations used to identify and distinguish products or services. Motion marks are relatively rare and require specific representations to be eligible for trademark registration. Examples include the animated Google logo.
    • Three-Dimensional (3D) Mark: A 3D mark is a type of trademark that consists of the shape or configuration of a product or its packaging. Examples include the Coca-Cola bottle's distinctive shape and the Toblerone chocolate bar's triangular packaging.

    Benefits of Well-Known Trademarks

    Well-known trademarks offer several significant benefits to their owners, providing a higher level of protection and recognition in the marketplace. Some of the key benefits of well-known trademarks include:
  • Enhanced Protection: Well-known trademarks receive broader protection compared to regular trademarks. They are more likely to be protected from potential infringement and dilution, even if the goods or services are not directly related. This extended protection helps prevent others from using similar or identical marks that could cause confusion among consumers.
  • Global Recognition: Well-known trademarks are widely recognized by the public, not only within their home country but also internationally. This widespread recognition contributes to the brand's reputation and increases consumer trust and loyalty.
  • Brand Value and Reputation: Well-known trademarks often represent brands with a long-standing history of providing high-quality products or services. As a result, they carry a strong brand value and reputation, which can lead to increased customer loyalty and a positive brand image.
  • Deterrent Effect: The status of being a well-known trademark acts as a deterrent against potential infringers. Competitors are less likely to use or imitate a well-known mark due to the risk of facing legal consequences and damaging their own reputation.
  • Expansion Opportunities: Having a well-known trademark can open up new business opportunities and expansion possibilities. Companies with well-known marks may have an advantage when entering new markets or launching new products or services under the same brand.
  • Higher Market Share: A well-known trademark can help a company secure a larger market share, as consumers tend to prefer products or services associated with recognized and reputable brands.
  • Preventing Trademark Tarnishment: With a well-known trademark, the owner can take action to prevent the mark's use in a way that could harm its reputation or dilute its distinctiveness.
  • Increased Licensing and Franchising Opportunities: Companies with well-known trademarks often have more opportunities to license their brand or enter into franchising agreements. These licensing and franchising arrangements can generate additional revenue streams for the trademark owner.
  • Stronger Legal Remedies: In case of trademark infringement, well-known trademark owners have stronger legal remedies available. Courts may be more inclined to issue injunctions and award higher damages to protect the mark's reputation and commercial value.
  • Distinctive Marketing Advantage: The status of a well-known trademark can be used as a distinctive marketing advantage. Companies can leverage their mark's reputation to differentiate their products or services from competitors and attract more customers.
  • Criteria for Well-Known Trademarks

    The criteria for determining well-known trademarks can vary from country to country and are typically outlined in the trademark laws and regulations of each jurisdiction. However, there are some common factors that are considered by many countries when determining the well-known status of a trademark. These criteria may include:

    • Applicant’s name
    • Business type
    • Business objectives
    • Brand/logo/slogan name
    • Registration address
    The documents required are:
    • Signed Form-48
    • Identification proof of the signatory
    • Address proof of the signatory
    • Business proof (depends on the type of business)
    • Udyog Aadhar/MSME registration certificate (optional).
    1) Extent of Use: The trademark must have been extensively and continuously used in commerce, either nationally or internationally, over a significant period. The mark should have gained substantial recognition and reputation among the relevant consumer base.
    2) Geographical Reach: The mark's reputation and recognition should extend beyond the borders of the country where it is registered. Well-known trademarks are typically known and recognized in multiple countries or regions.
    3) Duration of Use: The trademark's duration of use and continuous promotion play a role in determining its well-known status. Marks with a long history of use and recognition are more likely to be considered well-known. Public Recognition: Well-known trademarks are widely recognized by the public in the relevant industry or sectors. Consumer surveys and market research may be used to demonstrate the mark's level of public recognition. Sales and Market Share: The mark's market share and commercial success are relevant factors. A well-known mark is likely to have a significant market presence and sales volume.
    4) Advertising and Promotion: The level of investment in advertising and promotion to create brand awareness is considered. Extensive and consistent marketing efforts contribute to a mark's reputation.
    5) Protection and Enforcement: The trademark owner's efforts to protect and enforce the mark against potential infringement or dilution can be indicative of its well-known status.
    6) Distinctiveness and Uniqueness: The distinctiveness and uniqueness of the mark are taken into account. Highly distinctive and non-generic marks are more likely to be recognized as well-known.
    7) Transborder Reputation: A well-known trademark should have gained reputation and recognition across national borders, indicating its cross-border appeal.
    8) Industry Recognition: The mark's recognition within the relevant industry or trade sector is considered. The mark should be known not only among consumers but also within the business community.

    Why Pleadmasters?

    Here is why you should choose Pleadmaster for trademark registration online
    • We conduct a thorough search of the TM directory
    • We prepare the authorization letter, so we can file for tm registration on your behalf
    • Our experts guide you with the classes you need to apply under
    • We fill and apply with the Registrar
    • We constantly provide you with updates until the trademark registration process is complete
    • You get the best support throughout the online trademark registration process and all your queries will be answered.

    FAQ For Protection of a Well-Known Trademark

    Can you trademark a well known phrase?

    Maybe, well known phrases can be protected as trademarks if the individual or business applying for the trademark can show that the phrase has developed a distinctive secondary meaning independent of its primary meaning. The phrase must be associated with a specific commodity or service in that secondary sense.

    Can two people trademark the same thing?
    What is a unique trademark?
    What are the 4 types of trademarks?
    What is the weakest trademark?
    How well known marks are protected in India?
    Which trademark has the strongest protection?
    Is a trademark stronger than copyright?
    How do I get a well known mark?
    What is the difference between a trademark and a well known trademark?
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