Experts welcome new trademark rules

The rules focus on larger number of digital filings and reducing procedural steps by bringing down the number of forms from 74 to eigh

A well-known trademark is one which has widespread reach and recognition, something like the half-eaten apple symbol or the three slanted bars from a popular sportswear manufacturer.

 The Union government’s new trademark rules, notified on Monday, are largely being lauded by practitioners and experts as a step in the right direction.

The rules focus on larger number of digital filings and reducing procedural steps by bringing down the number of forms from 74 to eight.

The rules also bring about clarity in the process of registering a mark as a “well-known trademark”. Under the Trade Marks Act 1999, a well-known trademark is one which has widespread reach and recognition, something like the half-eaten apple symbol or the three slanted bars from a popular sportswear manufacturer.

Experts and practitioners have found this change to be positive as it will allow bigger brands, especially ones with trans-border reputation, to file applications claiming that they have achieved the standing of a well-known mark.

“At an elementary level, it makes a lot of difference because now you’ll have to recognise trans-border reputation and well-known marks in other jurisdictions,” said Dev Robinson, partner and national practice head for intellectual property rights, Shardul Amarchand Mangaldas & Co., a law firm.

“Now one can file an application and claim a mark to be well-known, and go ahead and demonstrate it. Earlier one had to file a representation, seeking the mark to be recognised as a well-known mark. There is better clarity now, which increases the chances of having the mark recognised as a well-known mark,” he added.

Senior advocate and intellectual property lawyer Prathiba Singh called the new rules on well-known marks excellent, as they bring the concept of raising objections to such marks being registered.

“The (trademark) registry’s power has been expanded to say these marks can be advertised and there can be objections as well. Earlier it declared very ordinary marks as well-known marks. Now that can be overcome,” she said.

However, experts also expressed the need to maintain the quality of marks being recognized as well-known.

“We have to be really cautious about what trademarks we declare as ‘well known’ ones, given that it confers huge legal power on these marks. Owners of such marks can stop even those goods and services that are far removed from their ordinary line of business. Courts have been quite circumspect about declaring marks to be well known and have done it through a hard fought adversarial process. One hopes that the government would be equally cautious,” said Shamnad Basheer, former chair professor of IP law at the West Bengal National University of Juridical Sciences, Kolkata, and founder of the website SpicyIP.

Singh added that these should not become routine applications.

“Timelines should be strictly followed and those marks which correctly deserve to be declared well known should be registered under this. Both timelines and quality of marks have to be maintained,” she said.