APAA e-Newsletter (Issue No. 41, June 2024)

The Well-known Trade Mark Conundrum – Indian perspective

Manosij Mukherjee, Advocate, S. Majumdar & Co. (India)


The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which came into effect in 1995, requires that members protect well-known trademarks. However, even prior to 1995, the concept of well-known trade marks or cross class protection was not new to India. Much before the present legislation of 1999, trademarks in India were protected through Court orders and orders of the Trade Marks Registry which recognized brands to be ‘well-known trade marks’ and protected the distinctiveness of a trade mark irrespective of the difference of the goods in dispute.

The decision in Caltex in year 1969 is probably the first jurisprudence on this aspect. The Hon’ble Bombay High Court refused the registration of the trade mark ‘CALTEX’ with respect to watches, based on an opposition filed by an entity who was registered with respect to petroleum goods. Subsequently, the decisions in Whirlpool and Benz set the tone to India’s commitment to protect well-known trade marks and continue to be the cornerstone of well-known trade mark jurisprudence in India.

Eventually, the Trade Marks Act1999 specifically introduced the concept of ‘well-known’ trade marks in accordance with India’s commitment to the TRIPS Agreement.

The enactment of the Trade Marks Act, 1999

The 1999 Act introduced specific provisions allowing brand owners to take action irrespective of the fact that the goods in dispute were different. The relevant provisions are as follows:

Section 2(1)(zg)

(zg) “well known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Section 11(2) read with Rule 43(1)(b)(iii) and 43(1)(b)(iv) of the Trade Marks Rules, 2017:

(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

Rule 43(1)(b)(iii) and 43(1)(b)(iv):

43 (1)(b) (iii) where the opposition is based on an earlier trademark which is alleged to be a well-known trademark within the meaning of sub-section 2 of section 11, an indication to that effect and an indication of the country or countries in which the earlier trademark is recognised to be well known;

43 (1)(b) (iv) where the opposition is based on an earlier trademark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier trademark is registered or applied for;

Section 29(4):

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

While Section 11(2) specifically uses the term “well-known trade mark” as defined in the Act, Section 29(4) does not use the term ‘well-known’., This leaves wider room for a brand owner to argue that even if a brand is not well-known, the owner is still entitled to protection if they can satisfy the requirement that their brand has a reputation in India.

This intention of the legislature is also evident from the Rule 43 (1)(b) as given above and trade mark oppositions must be approached in a similar manner.

Introduction of Rule 124 of the Trade Marks Rules, 2017

India introduced a provision allowing a brand owner to specifically seek determination of a brand to be a well-known trade mark by the Trade Marks Registry. Although the official fee is expensive (about USD 1200), especially for Indian brand owners, has been a recent significant increase in the filings for such determination.

Pertinently, the decision of the Delhi High Court in Tata Sia decision concerned the recordal of the brand ‘Vistara’ that was already declared to be a well-known trade mark. In that case, the Court came to the conclusion that it is mandatory for brand owners to pay the official fee irrespective of the fact that the Trade Marks Registry is merely recording the findings of the Court and not separately determining the well-known status of the trademark.

Well-known or Has Reputation?

The list maintained by the Trade Marks Office of well-known trade marks is ever growing with over 100 entries made in the last 7 years since the introduction of the Rule. Unfortunately, however, some of the entries do not necessarily qualify for the ‘well-known trade mark’ tag. While these trade marks undoubtedly have immense reputation and goodwill, they may not qualify to be a well-known trade mark or deserve a cross class protection.

Curiously, some of the brands featured in the list have been limited to certain goods or services which again raises doubts regarding the well-known determination per se as this would appear prima facie contrary to the meaning provided in the Act. Does such determination allow a brand owner a blanket protection over such a well-known trade mark even though it does not deserve a cross class protection? The answer to this question is tricky and it would be interesting to see how the High Courts deals with such a proposition in the future.

Until then, it is thus imperative for the Trade Marks Registry, while determining such applications for well-known status, to ensure that it can draw a fine distinction between a trade mark having reputation and a trade mark qualifying as well-known trade mark.

The distinctions ought not to be blurred as the requirements of a trade mark to qualify as a well-known trade mark are much higher and on a completely different pedestal if the law and the judicial precedents are considered.


The entire process of determining a well-known trademark must be dealt with a certain gravitas and caution.