Provisions of the Trademarks Act of 1999

The act's Section 11(6) clearly outlines the different considerations that the registrar must make when deciding whether a trademark qualifies as a trademark.

1. The awareness or acknowledgment of that register trademarks within the pertinent public, including information in India gained as a consequence of register trademark advertising.
2. The length, scope, and geographic region of any trademark usage.
3. The length, scope, and geographic reach of any trademark marketing, such as press releases, advertisements, and displays of the services or products covered by the trademark at trade shows or fairs.
4. The length of time and geographic scope of any trademark registration or application filed under this act, to the degree that they represent the trademark's usage or recognition.
5. The track record of effectively defending the trademark's rights; specifically, how much the brand registration has been acknowledged as a recognized register trademark by registrars or courts based on that record.

According to Section 11(7), the registrar must consider several factors when assessing whether the trademark is well-known or well-recognized in a relevant segment of the wider public within the purposes of Subsection (6).

1. The total number of customers, real or projected, for the products or services.
2. The quantity of people working in the channels used to distribute the products or services.
3. The trade associations for the products or services covered by such as registered trademark.

According to Section 11(8), a registered trademark must be deemed well-known for registration purposes under this act if a court or registrar finds that the trademark is well-known among at least one pertinent segment of the Indian public.

According to Section 11(9), the registration of a trademark must meet certain requirements in order to be considered a well-known trademark. These requirements include any of the following information.

1. That India has made use of the register trademark.
2. That a trademark registration has been made.
3. India was the country from where the trademark registration applications was submitted.
4. That is the registered trademark.
   • Is well renowned in; or.
   • Has been registered, or.
   • For whom a registration application has been submitted, any jurisdiction outside of India; or.
   • That the Indian population at large is familiar with the register trademark.

In addition, Section 11(10) requires the trademark registrar to safeguard a well-known trademark towards similar or identical trademarks while evaluating a trademark application and any opposition filed in connection with it.

Obligations for applicants

Indian courts and tribunals decided the status of well-known trademarks on an individual basis prior to the India TradeMark rules 2017 (the Rules) coming into effect. The TradeMarks Registry kept a registry of recognized well-known trademarks based on these rulings.

The Regulations streamlined the process for trademark owners to seek legal recognition to register a brand. A proprietor may submit a request to the Registrar, in accordance with Rule 124, to have their trademark classified as a well-known trademark. Form TM-M and the required fees as listed in the first schedule, that are presently INR 1,00,000 (about USD 1300), must be submitted with this application. Such requests are limited to electronic filing. In addition, the Statement of Case containing supporting documentation and evidence must be filed by the petitioner. Examples of evidence are

1. Evidence of trademark usage.
2. Applications for or acquisitions of trade mark registrations.
3. The yearly revenue turnover of the company that the mark applies to.
4. Quantity of real or prospective clients.
5. Along with associated expenses, there is trademark promotion and public relations.
6. Proof of the trade mark's awareness or recognition among the pertinent Indian public segment.