The concept of trademarks can be traced back to ancient times, when producers and artisans began using distinctive marks to identify the origin and quality of their goods. Over the centuries, this practice evolved into the modern legal regime of trademarks, where signs, designs, and logos function not only as identifiers of goods and services but also as protectors of reputation, goodwill, and consumer trust.
Under the Indian legal system, trademarks are governed by the Trade Marks Act, 1999. They serve as a cornerstone of commercial identity by distinguishing one trader’s goods or services from another’s. A “trademark” has been defined under Section 2(1)(zb) of the Act as a mark capable of graphical representation, capable of distinguishing goods or services of one person from those of others, and may include the shape of goods, their packaging, and combination of colours.
The Need for Trademarks
In a competitive marketplace, multiple entities often provide similar products or services. Trademarks thus serve two vital functions:
- Consumer Protection – preventing confusion by ensuring that consumers can identify the true source of goods and services.
- Business Protection – safeguarding the reputation, goodwill, and market presence of enterprises.
Although trademark registration is not mandatory, registration provides statutory rights of enforcement and stronger protection against infringement.
Well-Known Trademarks
A well-known trademark enjoys a higher level of protection owing to its reputation and recognition across a substantial segment of the public. Section 2(1)(zg) of the Trade Marks Act defines it as:
“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.”
Characteristics of a Well Known Trademark
- High degree of recognition among the relevant public.
- Strong association with particular goods or services.
- Distinctiveness that transcends product categories.
Unlike ordinary marks, well-known trademarks enjoy cross-class protection, preventing misuse even in unrelated goods or services.
Trademark Law in India
The Trade Marks Act, 1999 replaced the Trade and Merchandise Marks Act, 1958 to align Indian law with TRIPS obligations. The Act covers registration, enforcement, and recognition of trademarks.
- Registration: Applications may be filed by proprietors with the appropriate Trademark Office. Accepted applications are published in the Trademark Journal for opposition.
- Infringement: Trademark infringement is both a civil and criminal offence under Indian law. Notably, it is cognizable and non-bailable.
- International Framework: India is a member of treaties such as the Paris Convention, Madrid Protocol, TRIPS Agreement, and Singapore Treaty, ensuring global protection of marks.
Criteria for Determining Well-Known Trademarks
Sections 11(6)–11(9) of the Trade Marks Act, 1999 and Rule 124 of the Trade Marks Rules, 2017 outline the criteria for determining well-known status. Factors include:
- Recognition of the mark by the public in India and abroad.
- Duration, extent, and geographical area of use.
- Extent of advertising and publicity.
- History of enforcement of rights.
- Registration or applications across multiple jurisdictions.
What the Courts have said!
- The Delhi High Court in Daimler Benz v. Hybo Hindustan [AIR 1994 DELHI 239] restrained the defendant from using “Benz” for undergarments, recognizing it as a well-known mark.
- The Supreme Court in Whirlpool Co. vs N.R. Dongre [1994 IVAD (DELHI) 667] recognized Whirlpool’s transborder reputation despite absence of registration in India.
- The Delhi High Court in Rolex SA vs Alex Jewellery Pvt. Ltd. [CS (OS) 4/2008 decided on April 9, 2009] upheld “Rolex” as a well-known trademark and issued an injunction against misuse.
Procedure for Recognition as a Well-Known Trademark
Brand owners may apply for recognition of their mark as “well-known” by filing Form TM-M with the prescribed fee of ₹1,00,000 under Rule 124 of the 2017 Rules. The application must be supported by evidence such as:
- Judicial decisions or Registrar’s findings.
- Proof of use, consumer reach, and recognition.
- Evidence of advertising and publicity.
Upon examination, the Registrar may publish the application for objections. If unopposed, the mark is included in the list of well-known marks and published in the Trademark Journal.
Effects of a “Well-known Status” - Protection and Enforcement
Well-known trademarks enjoy heightened protection, including:
- Cross-class protection – safeguarding even in unrelated categories.
- Anti-dilution remedies – preventing blurring or tarnishment of distinctiveness and reputation.
- Judicial remedies – including injunctions, damages, and account of profits.
- Digital protection – safeguarding against cybersquatting and misuse in domain names and online platforms.
Conclusion
Well-known trademarks go beyond being mere commercial symbols; they embody consumer trust, brand reputation, and economic value. Indian law, in line with international obligations, grants them special recognition and enhanced protection. As businesses expand into global and digital markets, the importance of shielding such marks from misuse is paramount. However, safeguards must also ensure that the recognition of well-known marks is not misused as a monopolistic tool. Striking this balance is essential for promoting fair trade, consumer welfare, and brand integrity.
