Well-known marks in India: legal landscape and protection

Well-known marks symbolise exceptional consumer awareness that extends beyond specific industries and geographic borders. Such trademarks merit enhanced legal protection due to their widespread recognition. Properly safeguarded, they remain a valuable asset for the business concerned. However, attaining and asserting the status of a well-known mark in India puts a heavy onus on the applicant to satisfy the evidentiary requirement that is meticulously scrutinised by the examiner before granting the coveted status.

The protection of well-known marks is governed by Section 11(6) of the Trade Marks Act, 1999, which lists factors such as the degree of recognition among consumers and the extent of a mark’s usage to determine their well-known status. In addition, duration of use, geographical reach, advertising, and promotion play a crucial role.

The criteria under Indian trademark law are adopted from the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), administered by the World Trade Organization. Article 16 of the TRIPS Agreement extends the protection to not only identical goods and services but also to dissimilar ones if the use of the mark would indicate a connection between the goods or services and the owner of the registered trademark, potentially damaging the owner’s interests.

To gain official recognition, a petition must be submitted to the Trade Marks Registry with supporting evidence and an affidavit that shows the mark’s reputation, usage, and market presence. The necessary documentation includes:

• Sales figures – supported by invoices to show significant sales and market presence;

• Advertising expenditure – emphasising investments in promoting the mark, supported by examples of online campaigns, extracts from magazines, newspapers, journals, etc.;

• Media coverage – showcasing articles and reports about the mark’s prominence;

• Registration details – documenting existing trademark registrations in India and globally; and

• Awards and accolades – industry awards, brand ranking, corporate and social responsibility initiatives.

As per Rule 124(5) of the Trade Marks Rules, 2017, all well-known marks must be notified in the trademark journal after acceptance. Rule 124(4) provides that any party can file an objection against a well-known mark within 30 days of its publication. The rules do not clarify the procedure to be adopted after an objection is filed, and such cases are therefore progressing quite slowly. Additional guidelines are required to be framed by the Trade Marks Registry to address this gap. Generally, the following objections can be raised against a grant of well-known status:

• Non-compliance with trademark registration requirements – the objecting party may argue that the mark lacks distinctiveness or is overly descriptive, failing to meet the essential criteria for registration under the Trade Marks Act, 1999.

• Prior use – if the objector has been using a similar or an identical mark, they can claim prior rights and assert their precedence over the advertised mark.

• Likelihood of confusion – an objection may be raised if the mark is likely to confuse consumers due to its similarity to an existing mark, potentially harming the objector’s brand.

• Public interest – allowing registration of the mark could be argued as contrary to public interest or morality. Or the mark is a common word that may create a monopoly for a wide range of goods and services; thereby, the trade and the public will be restricted from its use or identify their wares with reference to the mark.

• Misleading nature – marks that are deceptive about their nature, quality, or geographical origin may face objections on this ground.

The courts, as part of Rule 124 of the Trade Marks Rules, 2017, can declare a mark to be well known. The declaration can be sought as part of a trademark infringement and/or passing-off action/lawsuit. However, the act does not provide for automatic inclusion of such a declaration in the list of well-known marks.

In a ruling in May 2023 (Tata Sia Airlines Limited v Union of India), the High Court of Delhi observed that the purpose of Rule 124 was to streamline the procedure, and bring uniformity in the declaration, of well-known trademarks. Hence, even after a mark has been declared as a well-known mark by a court, a request needs to be filed, as per Rule 124, for the inclusion of the mark in the list of well-known marks and the requisite fees to be paid.

In its ruling (concerning the well-known status of the mark ‘Vistara’), the court held that a judicial declaration of a mark as well known does not warrant its automatic inclusion in the list of well-known trademarks. The court explained that the obligation to file a TM-M form, which allows applicants to request changes to a pending trademark application, and pay the requisite fees remains compulsory, as provided under Rule 124.

The issue before the court was whether the petitioner could be compelled to comply with Rule 124 once the court had declared the mark to be well known and whether, in such a case, a request for inclusion of the mark in the list of well-known trademarks should necessarily be made on form TM-M, along with the payment of the prescribed fee.

The court took the view that a request for inclusion in the list of well-known marks after court recognition is necessary, with the prescribed fees. However, there should be no fresh examination and no requirement for adducing evidence.

India’s recognition and protection of well-known marks has evolved significantly. As of 2024, the Indian Trade Marks Registry maintains a published list of well-known marks, with 281 marks included at present.

Several jurisdictions aside from India – such as the US, the EU, and China – have provisions for the protection of well-known marks. For instance:

• In the US, well-known marks are protected under the Lanham Act and are evaluated on a case-by-case basis;

• In the EU, the EUIPO grants protection to well-known marks under Article 8(5) of the European Union Trademark Regulation; and

• In China, the CNIPA has strict standards for recognising well-known marks, which are protected even for dissimilar goods.

Despite the enhanced protection, brand owners face several challenges in enforcing their rights over well-known marks. Counterfeiting, cybersquatting, and unauthorised use of well-known marks as domain names and on social media platforms are quite common.

Counterfeiting remains a significant threat to well-known marks, particularly in industries such as luxury goods, electronics, and pharmaceuticals. Brand owners must continuously monitor marketplaces and employ a multi-pronged strategy – including customs enforcement, legal action (both civil and criminal), and collaboration with law enforcement agencies – to combat counterfeit products and maintain their brand sanctity.

The registration of domain names that are identical, or confusingly similar, to well-known marks, with the intention of selling them to the rightful owner at a premium or exploiting the mark’s reputation, is another common problem faced by brand owners. Cybersquatters also use such domains for committing financial scams. The Uniform Domain Name Dispute Resolution Policy provides a mechanism for resolving such disputes and recovering misappropriated domain names. For .in domains, India has the .IN Domain Name Dispute Resolution Policy to address cybersquatting.

The proliferation of social media platforms has created new avenues for the unauthorised use of well-known marks. Brand owners actively monitor these platforms and utilise takedown procedures to address infringing content.

The protection of well-known marks is a critical aspect of intellectual property law, ensuring that brands with substantial recognition and reputation are safeguarded against misuse and dilution.

While international treaties and national regulations provide a robust framework for protection, the dynamic nature of commerce and technology necessitates continuous vigilance and adaptation by brand owners. By understanding the legal landscape and employing proactive enforcement strategies, brand owners can effectively protect their valuable well-known marks.