What are well known trademarks?

The name “Amul” has attained an iconic status in India. So much so that even if a third party uses the name Amul for goods other than dairy products, consumers will assume that it is still a product of the original proprietor. It means only the registered proprietor of Amul, i.e. Kaira District Cooperative Milk Producers can register the word Amul for any class of goods or services. Marks that have achieved such status and reputation are known as well known trademarks.

Meaning

Well known trademarks are marks that have become so to a substantial segment of the public that uses such goods or services. The concept of well known trademarks has been incorporated in the Trade Marks Act, 1999 for the purpose of protecting not only the trademark with respect to a specific type of goods or services but also in relation to other goods or services if a substantial segment of the public believes that there is a connection between the goods of the second proprietor with the first proprietor.

In Carrefour v. Subburaman, the appellant was the owner of the trademark “Carrefour” that was registered in India with respect to a variety of products excluding furniture. The respondents were using the same trademark with respect to furniture products. The Madras High Court held that the appellant had been using the mark for several years and had obtained goodwill and reputation in several countries. Moreover, the appellants had an explanation for adopting the French word “Carrefour” as their trademark. The respondents on the other hand had no explanation as to how they had come to adopt such a mark. The judgment was in favour of the appellants as a substantial segment of the public could have connected their trademark with the respondents.

Registering well known trademarks

• A statement of case that mentions the claimant’s rights on the trademark and describing the trademark as a well known trademark. 
• In case the trademark has been recognized as a well known trademark by the Registrar of Trademarks or by any court of India then a copy of the successful enforcement or judgment is to be furnished.
• Evidence supporting the owner’s claim such as use of the trademark, registration certificate of a previously registered trademark, annual turnover, publicity and advertisement and knowledge and reputation of the trademark in relevant sections of the public across the world.