Flipkart, Haldiram, Sandisk, Jockey, Vistara, Puma, Aditya Birla, Samsung, HP and Amul are brands that are literally household names even among households that may not have their customers yet. These are what are known as “well known trademarks” under Trademark law.
In this article, we will be discussing what is meant by such a status, what are the legal provisions for it, who is empowered to declare it, its possible implications and recent judgments on the subject of well-known trademarks.
What is a “well-known trademark”?
As the term implies, a well-known trademark is a mark that is widely recognized by the public as a symbol of good quality and reputation it carries and it is also associated with the goodwill of the goods and services it represents.
Section 2(zg) of the Trademarks Act, 1999 (“Act”) defines “well-known trademark” as a mark which has become so to the substantial segment of the public which uses such goods or receives such services. 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.
The relevant provisions under the Act with regard to “well-known” marks, are as follows:-
(a) Section 11(2) recognizes one of the relative grounds of refusal of a trademark stating that a trademark shall not be registered if or to the extent the earlier trademark being a well-known trademark in India.
- b) Section 11(6) lays down the criteria for determination of a well-known mark, which include – knowledge or recognition of that trademark, the duration, extent and geographical area of any use of that trademark, the duration, extent and geographical area of any promotion of the trademark,
(c) Section 11(9) lays down the conditions/factors which are taken into consideration for the grant of a well-known trademark. They are as follows: —
- That the Trademark is registered in India.
- That public at large has knowledge of the trademark.
- That the Trademark has been used in India.
- Application for registration of trademark is underway in India
- That the trademark is registered in any other jurisdiction
- Section 11(10) sets out an obligation on the Registrar of Trademarks to protect a well-known trademark against marks which are identical and/or similar.
Who declares the well-known trademark?
While we defined a “well-known trademark” above, in order to truly understand it one also needs to be certain about the authority behind according the mark such status. Section 11(6) of the Act provides that both the Registrar of Trademarks as well as the Court having competent jurisdiction can recognize a trademark as a well-known mark.
Rule 124 of the Trademarks Rules of 2017 (“Rules”), which empowers the trademark registry to grant recognition of a trademark as a well-known mark, also makes it clear that once the Court passes an order recognizing a trademark as a well-known mark, the trademark registry will have to give due consideration to the said recognition, while adjudicating as to whether the applicant is entitled to be granted the recognition of its trademark as a well-known mark.
Thus, the following 10 factors will have to be considered while adjudicating whether a trademark is a well-known mark or not:
- The extent of knowledge of the mark vis-à-vis the relevant public segment;
- Duration of use;
- Extent of product and services to which the mark is being used;
- Method, frequency and duration of advertising and promotion of the mark;
- Geographical extent of trading area where the mark is being used
- Registration of the mark;
- Volume of goods and services being sold under the mark;
- Nature and extent of use of same or similar marks by other parties;
- The extent to which rights claimed in the mark have been successfully enforced; and
- Actual number of consumers consuming goods or availing services under the brand.
Well-known trademark list:
The Indian Patent Office has published the list of Well-known trademarks until March 18, 2024, which shows 281 marks have been recognised as well-known trademark so far:
Recognised By | No. of Well-Known Trademarks |
High Courts | 86 |
TMR | 168 |
IPAB | 16 |
Commercial Courts | 3 |
District & Session Judge | 5 |
Supreme Court | 1 |
WIPO | 2 |
Total | 281 marks |
Source: IPO Website
While the first mark to be recognised as well-known trademark was the 7 O’CLOCK for shaving razors by Bombay HC in Kamal Trading Co. and Ors. v. Gillette U.K. Ltd. (1988), the most recent mark to be declared well-known trademark was Haldiram mark (on April 2, 2024).
Effect of declaration of well-known trademark status:
Usually, the registration of a trademark is provided under goods/services of the same class. But once a mark is recognized as “well-known trademark”, the recognition, reputation, and goodwill of that mark extend beyond any specific class of goods or services, encompassing all classes. This is the special and unique protection accorded to a well-known trademark for the simple reason that any such recognition has achieved such familiarity that if this special protection were not provided, the competitors using mark in different classes could cause confusion in the minds of the public.
Some recent cases on declaration of well-known trademark status by HCs:
- Recognizing the Plaintiffs’ mark and logo ‘HALDIRAM’, as well as the Oval-shaped mark, as ‘well-known’ status, the Delhi High Court observed that the concept of a ‘well-known’ mark was ‘dynamic’ and the court must recognise how a mark has the ability to imbue products with distinctiveness and assurance of quality that extends beyond mere geographical confines.
- Bombay HC declared ATOMBERG as well-known trademark by noting that the recognition, reputation, and goodwill of the Plaintiff’s well-known trademark ATOMBERG, extended beyond any specific class of goods or services, encompassing all classes.
- Delhi HC recognised ‘BURGER KING’ as well know mark while considering the long period, during which the ‘BURGER KING’ mark and its variations have been used for fast foods specially for Burgers,
- In ITC Ltd., after considering the legal position regarding the protection of well-known marks in India and the US, this Court declared ‘BUKHARA’ as a well-known mark. The Court held that the mark ‘BUKHARA’ originated in India and enjoys substantial goodwill and reputation not only among Indians but also among foreigners who travel to India and carry back the said reputation.
- In Chapter 4 Corp, the Court declared the ‘SUPREME’ redbox device mark as a ‘well-known’ mark in respect of apparel and clothing. The said declaration is limited to the ‘SUPREME’ red-box logo and does not extend to the word itself.
- In Glaxo Group Ltd., the Court declared the mark ‘BETNESOL’ as a ‘well-known mark’ in respect of pharmaceutical and medicinal items as also cognate and allied products.
Does a declaration of well-known trademark status by a HC automatically entitle it to get listed on well-known trademark list?
This question came up before the Delhi HC where it was held that, there is no conflict between Rule 124 and Section 11(8) as both operate differently and Rule 124 is for the implementation and enforcement of the provisions of Section 11(8), enabling the Registrar to include the already declared well-known mark in the list after its publication in the Trademarks Journal. The court agreed with the Trademark Registry that after the 2017 Rules were notified, applications for declaration of well-known trademark were entertained only after following the procedure of filling up the form TM-M along with the requisite fee.
What happens to a mark registered in different class when a similar mark is declared well known trademark?
Answering the above question in negative, the Delhi HC held that a declaration of a well-known trademark cannot give an automatic, unabridged, and unmitigated right to a proprietor to apply for rectification of all the marks which have subsisted on the Register for years prior and in different classes.
In the present time, when brand recognition, brand awareness and Brand protection are needed, the existing marks with substantial presence and reach face the uphill task of ensuring their marks are not used and misused in an unauthorized manner. In this context, the concept of a “well-known” trademark offers an opportunity for respective brand owners to go a step further and strengthen their brand protection.
