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Examination and Disclosure Requirements for Designation of Well-Known Marks under Section 124(5) of the Trade Marks Act, 1999

The concept of a "well-known mark" holds significant importance in the realm of trademark law, representing marks that have acquired substantial recognition and reputation among the public. Section 124(5) of the Trade Marks Act, 1999, governs the criteria and procedure for declaring a mark as well-known. This article delves into the crucial aspects of the examination process and the necessity of disclosing relevant pending litigations before designating a mark as well-known.

Examination of Court Orders:
One essential aspect in the determination of a well-known mark is the consideration of court orders that declare a mark as such. When assessing the validity of a mark's well-known status, the Registrar must scrutinize whether a specific declaration of well-known status exists within a court order. Relying solely on casual observations, particularly those made in passing or during preliminary observations, may not provide a robust foundation for establishing the mark's well-known nature. The Registrar's role in evaluating the significance and specificity of court orders is pivotal to ensure the accuracy of well-known mark designations.

Ex Parte Injunction Orders and Prima Facie Observations:
In the context of well-known mark declarations, ex parte injunction orders and prima facie observations deserve careful consideration. While such orders might indicate a certain level of recognition and reputation, they do not necessarily embody a comprehensive assessment of a mark's well-known status. It is imperative for the Registrar to differentiate between temporary measures and definitive declarations, thereby avoiding the potential misclassification of marks as well-known based solely on preliminary orders.

Disclosure of Pending Litigations:
Another crucial dimension to be integrated into the well-known mark assessment process is the disclosure of pertinent pending litigations. Applicants seeking well-known mark status should be obligated to disclose any ongoing legal disputes that challenge the mark's legality, validity, or ownership. Such disclosures contribute to a comprehensive evaluation of the mark's standing and reputation within the legal and commercial landscapes.

The recognition of a mark as "well-known" holds substantial legal and commercial implications, and as such, the evaluation process must be thorough and accurate. Section 124(5) of the Trade Marks Act, 1999, mandates an in-depth analysis of court orders, a nuanced approach to ex parte injunction orders and prima facie observations, and the inclusion of pending litigations in the decision-making framework. Striking the right balance between these elements ensures the integrity of well-known mark designations and reinforces the Act's objective of protecting marks of exceptional reputation and recognition.

Case Law Discussed:
Case Title: Kent Cables Private Limited and Ors Vs Union of India
Date of Judgement:11.08.2023
Case No. WP (C) IPD 30 of 2023
Neutral Citation No: 2023: DHC: 5716
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Name of Court: Allahabad High Court

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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