Well Known Marks, Dilution and Brand Value

In one line

MU prints this topic twice, so this chapter takes the modern half: the standalone declaration under rule 124, the published list, what the status is actually worth in a dispute, and what a brand is worth in money.

What is NOT in this chapter

The statutory apparatus is in chapter 300, and it is not repeated here. That chapter works, provision by provision, the definition in section 2(1)(zg); the five factors in section 11(6); the relevant section of the public in section 11(7); the binding effect of an earlier determination in section 11(8); the five things the Registrar may not require, in section 11(9); the two duties in section 11(10); and the good faith saving in section 11(11).

Read that chapter first. Everything below assumes it.

Rule 124: the Indian innovation

Before the 2017 Rules, a mark became well known only when a court or the Registrar said so in a contested proceeding. Rule 124 created a standalone route and a public list.

124(1). "ANY PERSON MAY, on an application in FORM TM-M and after payment of fee, request the Registrar for DETERMINATION OF A TRADEMARK AS WELL-KNOWN. Such request shall be accompanied by a STATEMENT OF CASE ALONG WITH ALL THE EVIDENCE AND DOCUMENTS RELIED by the applicant in support of his claim."

124(2). The Registrar shall, in determining the mark as well known, take into account sub sections (6) to (9) of section 11.

124(3). He may call for such documents as he thinks fit.

124(4). Before determining a mark as well known he may invite objections from the GENERAL PUBLIC, to be filed WITHIN THIRTY DAYS of the invitation.

124(5). If determined, the mark is published in the Trade Marks Journal and included in the LIST OF WELL-KNOWN TRADEMARKS maintained by the Registrar.

124(6). He may at any time remove a mark from the list if it was erroneously or inadvertently included or is no longer justified to be there, after providing due opportunity of hearing.

What the route is worth, and what it costs