Well Known Trademarks in India

In today’s globalized economy, trademarks are essential for distinguishing products and services, while also serving as valuable assets for businesses. Among the different categories of trademarks, well-known trademarks hold a unique position. These marks are widely recognized and have gained significant reputation, often crossing national borders.

Indian trademark law offers exceptional protection to well-known trademarks, ensuring that their goodwill and reputation are recognized nationwide and across all categories of goods and services. As a result, if there is an attempt to register a trademark that is deceptively similar to an existing well-known mark, even for unrelated goods or services, the application will be rejected. The Intellectual Property Office (IPO) acknowledges well-known trademarks in India based on their national, international, and cross-border recognition.

This article will explore the concept of well-known trademarks, examine the relevant legal provisions, notable cases, recent trends in their recognition and enforcement and outline the filing process.

Understanding Well-Known Trademarks

Although Indian courts have long recognized the reputation and popularity of brands, even granting them the status of well-known marks under common law, the formal concept of a “well-known” trademark was introduced with the Trade Marks Act, 1999 (‘Act’).

According to the Act, a well-known trademark is defined as a mark that, in relation to any goods or services, is so recognized by a significant portion of the public that its use for different goods or services would likely suggest a connection to the original goods or services. [1]1 It is well-established that the mark does not need to be known by the general public, but it suffices if it is recognized within a particular segment of the trade or consumer base. [2]2

Notable Well-Known Trademarks in India

India maintains a list of well-known trademarks recognized by the Registrar of Trade Marks which can be accessed at https://www.ipindia.gov.in/IPIndiaAdmin/writereaddata/Portal/Images/pdf/List_of_Well-Known_Trade_Marks_as_of_18.03.2024.pdf.

As of recent updates, there are approximately 281 such trademarks. Some prominent examples include: GOOGLE, TATA, AMUL and RELIANCE.

Criteria for Determination

The determination of a well-known trademark involves assessing several factors:

  • Public Knowledge and Recognition: The degree to which the trademark is known among the relevant public.
  • Duration, Extent, and Geographical Reach: The length of time and the geographical area over which the trademark has been used.
  • Promotion and Advertisement: The extent and amount of publicity and advertisement of the trademark.
  • Registration and Enforcement: The record of successful enforcement of the rights in the trademark, particularly the extent to which the trademark has been recognized as well-known by competent authorities.

Legal Provisions Governing Well-Known Trademarks

The Trade Marks Act, 1999, provides a comprehensive framework for the protection of well-known trademarks:

  • Section 2(1)(zg): Defines well known trademarks
  • Section 11(2): Offers protection for well known marks across all classes
  • Section 11(6): Outlines the criteria for determining whether a trademark is well-known, including factors like public knowledge, duration and extent of use, promotion, and registration or enforcement records.
  • Section 11(8): States that a trademark recognized as well-known by any court or the Registrar is protected across all classes of goods and services.
  • Section 11(9): Clarifies that a trademark does not need to be registered or used in India to be considered well-known.
  • Section 11(10): Ensures protection against any harm to the reputation of well-known trademarks.
  • Section 29(4): Tackles infringement concerns associated with well-known trademarks.
  • Section 29(9): Clarifies what constitutes infringement of well-known trademarks to avoid misuse.

Process for Registration of Well Known Trademark in India

Rule 124 of the Trade Marks Rules, 2017 outlines the steps for registration of a well known trademark, which are as follows:

  1. File an application on Form TM M along with prescribed official fee.
  2. Documents Required: Documents demonstrating the use of trademark in India and documents that supports the trademark recognition in India.
  3. Statement from claimant explaining the significance of the trademark.
  4. Financial data and legal documents: Documents stating the sales turnover of goods/services sold/offered under the trade mark as well as the expenses incurred with respect to promotion/advertisement of the trademark. Any legal document related to trademark recognition in India.
  5. Examination: After thorough examination, the trademark will be approved to recognize as well-known.
  6. Publication: Once the trademark is recognized as well known, it will be published in trademarks journal for four months and in case no opposition is filed, the trademark will be officially recognized as well-known.

Recent Trends and Cases

The recognition and enforcement of well-known trademarks in India have seen significant developments in recent years. The Trade Marks Rules, 2017, streamlined the process, allowing brand owners to apply directly to the Registrar for recognition of their marks as well-known. This has led to an increase in applications and judicial pronouncements concerning well-known trademarks.

Case 1: Haldiram India Pvt. Ltd. v. Berachah Sales Corporation & Ors. [3]3

In April 2024, the Delhi High Court recognized ‘Haldiram’s’ as a well-known trademark in the case of Haldiram India Pvt. Ltd. v. Berachah Sales Corporation & Ors. The court permanently restrained the defendants from using the name ‘Haldiram’ or any mark deceptively similar. Additionally, ₹50 lakhs in damages were awarded to the plaintiff, and the Registrar of Trademarks was directed to list ‘Haldiram’s’ as a well-known trademark.

Case 2: G.D. Pharmaceuticals Private Limited v. Cento Products (India) [4]4

In August 2024, the Delhi High Court declared ‘Boroline’ a well-known trademark in the matter of G.D. Pharmaceuticals Private Limited v. Cento Products (India). The court prohibited the defendant from producing or selling products under the name ‘Borobeauty,’ citing significant similarities to ‘Boroline.’ A cost of ₹2 lakhs was imposed on the defendant, and the Registrar was instructed to include ‘Boroline’ in the list of well-known trademarks.

Implications of Well-Known Status

Achieving well-known trademark status in India offers significant advantages to brand owners. Such recognition provides extensive protection across all classes of goods and services, preventing unauthorized use or registration of identical or similar marks, even in unrelated industries. This broad safeguard helps maintain the brand’s distinct identity and prevents dilution of its value.

Additionally, well-known trademarks enjoy enhanced legal remedies against infringement. Courts are more likely to grant injunctions and award damages in favor of well-known mark owners, given the mark’s established reputation and goodwill. This legal backing deters potential infringers and reinforces the brand’s market position.

Furthermore, well-known status can facilitate international trademark protection. Many countries acknowledge the concept of well-known trademarks under the Paris Convention, allowing brand owners to seek protection in jurisdictions where the mark may not be registered but has attained recognition.

Conclusion

Protecting well-known trademarks in India requires vigilance, strategic planning, and adherence to the legal processes outlined in the Trade Marks Act, 1999. By registering a trademark, seeking recognition as a well-known mark, enforcing rights, and monitoring the marketplace, businesses can safeguard their intellectual property from infringement and misuse (it is advisable to file an application for registration of mark as well-known mark to ensure wide protection in all the spheres). Moreover, leveraging international protection mechanisms ensures that well-known trademarks retain their strength globally. As the market evolves and competition intensifies, proactive trademark protection is more critical than ever to preserving a brand’s identity, reputation, and goodwill.

References

  1. [1] Section 2(1)(zg) of The Trade Marks Act, 1999 ↩︎
  2. [2] Rolex Sa vs. Alex Jewellery Pvt Ltd & Ors., IA.No.279/2008 in CS(OS) 41/2008 ↩︎
  3. [3] CS(COMM) 495/2019 ↩︎
  4. [4] CS(COMM) 53/2019 ↩︎

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