Contours of well-known marks protection in India

Attaining a well-known status for a trademark provides a multitude of benefits. This includes, but is not limited to: safeguarding the brand's integrity, bolstering its legal position, and contributing to its overall exclusivity in the minds of consumers and traders. Thus, most businesses strive to attain this coveted status for their brand.

The recognition and protection of well-known marks in India is governed by Section 11(6) to (9) of the Trade Marks Act, 1999 (ꞌthe Actꞌ). These provisions provide broad criteria to be considered when determining a mark as a well-known mark and are modeled on the provisions in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. Rule 124 of the Trade Marks Rules, 2017 (ꞌthe Rulesꞌ) lays down the procedure to file and process an application for recording a mark as a well-known mark before the Registrar of Trade Marks. Since Rule 124 was added in 2017, several brand owners have filed the applications to declare their mark as well-known.

Before the establishment of the rules and procedure for recording well-known marks in India (March 2017), the Trade Marks Registry (TMR) issued a roster of 84 marks that were declared as well-known. This was based on the findings of the High Courts of India or the Appellate Board in proceedings pertaining to enforcement of those marks. The list, accessible on the TMR's website, presently encompasses a total of 137 marks that have been officially declared as well-known as of October 10, 2022.

With the procedure for declaring marks to be recorded as well-known, a number of issues have come up before the courts, both substantive and procedural. A few of them are summarised below:

1. In Tata Sia Airlines Limited v. Union of India (2021), the High Court of Delhi considered the procedure to be adopted for marks declared as well-known by the court: do they need to be freshly examined by the registrar? The court held, even where a trademark is declared to be well-known by the court, Rule 124 will apply with respect to the procedure for publication and inclusion. The procedure will include making a request through Form TM-M with the prescribed fee, followed by requisite action under Rule 124(5). After verification of the certified copy of the judgement of the court and other administrative tasks, the mark will be published and accepted as well-known; 

2. In Kamdhenu Ltd. v. The Registrar of Trade Marks (2021), the issue before the court was whether an affidavit in support of the documents submitted for consideration of a mark to be declared well-known is a necessary requirement. The Delhi High Court allowed the appeal providing the appellant an opportunity to file a supporting affidavit and any further documents in support of its application for grant of well-known status for its mark ‘KAMDHENU’. The Court held that:

   1. Under the Act and Rules, it is not a mandatory requirement to file an affidavit by way of evidence to determine the well-known status of a trademark, provided sufficient documentary evidence is supplied;

   2. As per Section 129 of the Act read with Section 3 of the Evidence Act, ‘evidence’ includes both “oral evidence” and “documentary evidence”;

   3. At best, the registrar can always grant the applicant an opportunity to file such an affidavit if the documentary evidence and the statement of case are insufficient; and

   4. Failure to file the affidavit will not result in the application being dismissed. 

3. In Kent Cables Private Limited & Ors. v. Union of India (2023), Kent Cables invoked the jurisdiction of the Delhi High Court to contest the inclusion of the "KENT" mark, widely associated with reverse osmosis (RO) systems, in the list of well-known trademarks published in a recent Trademark Journal under Rule 124(5) of the Rules. Kent Cables contended that both parties are embroiled in a contentious battle over the rights to the coveted "KENT" mark. It further challenged the validity of two decisions that Kent RO may have relied upon, asserting that these decisions do not confer the status of a well-known mark upon their mark.

Considering the submissions of Kent Cables, the court directed the Registrar of Trademarks to produce the complete evidence or documentation reviewed by them prior to accepting Kent RO's application for grant of well-known status, leading to its publication under Rule 124(5).

The TMR has lately become active in processing the applications filed by several brand owners for declaration of their marks as well-known marks. The backlog had accumulated during the COVID-19 pandemic, but is now being cleared rapidly. In the last three months, several applications have been accepted and published in the Trademark Journal falling in the following two categories: 

• a) Publication of marks under Rule 124(4) of the Rules, where the Registrar would examine the evidence and assess whether the mark qualifies to be included in the list of well-known marks. Further, upon acceptance and publication of such marks, objections are invited from the public, before their determination as well-known marks; and

• b) Notification of the marks under Rule 124(5) of the Rules, in which the High Courts of India declared the marks as well-known, and the committee has determined them to be published in the Trademark Journal for inclusion in the list of well-known marks. No objections are invited against such marks from the public.

A compilation of such recently published marks can be accessed here.

As brands jostle to increase their market share, the well-known marks declaration can prove to be an important tool in their armoury. The well-known status not only serves as a constructive notice on third parties adopting a similar mark but also prevents its use by dissimilar goods, claiming such use will dilute the brand reputation.