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
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
Email: [email protected]
, Ph no: 9990389539