Q&A: Obtaining the well-known trademark status in India

Gowree Gokhale

Bharat Benz, Nutella, Ritz, Taj and more have been granted the well-known trademark status recently. More than a badge of honour, the status also grants additional protections. Gowree Gokhale, a solicitor and registered patent and trademark attorney, explains how companies can secure this recognition.

Q1. What explains the trend of courts granting the well-known trademark status to brands that are household names? How is this route vis-à-vis applying at the Trademark Registry?

The trend is not recent. Recognition of a mark as a well-known trademark typically arises incidentally in litigation, when evidence on its use and reputation is placed before the court in an infringement or passing-off action. At times, parties also specifically seek a court declaration that it is a “well-known mark”. This makes litigation a vehicle for both remedy and recognition. Courts often recognise the well-known mark status even at the interim stage.

The other route is under rule 124 of the Trade Mark Rules, 2017, by filing Form TM-M with a fee of INR100,000 (USD1,140). In this case, a public notice may invite objections.

Even in a judicially recognised well-known mark, the owner must apply to the registry by paying a fee and with a court order. In such cases, the trademark registrar should not re-examine whether the mark is a well-known mark. The registrar’s role here is limited to verifying the judgment and proceeding with inclusion. In both cases, the evidence required to prove well-known status is the same.

Q2. At what stage should a company seek this recognition from the Trademark Registry?

There is no fixed statutory waiting period, but companies apply once they can show a substantial, sustained reputation. Companies that have not used the mark in India but have used it worldwide can still apply if they have relevant evidence.

For such cases, the evidence includes sales figures, advertising expenditure, media recognition, awards, enforcement history and consumer surveys.

For example, [popular clothing brand] Peter England was recognised in 2024 as a well-known trademark by Delhi High Court based on long-term use, heavy advertising and celebrity endorsements. [Energy saving ceiling fans maker] Atomberg Technologies was recognised by the Bombay High Court in under 15 years of existence, but only after proving nationwide recognition and consistent enforcement.

Companies should therefore apply once the trademark has been used for a reasonable duration and has acquired a stable reputation. All this should be supported by documentary evidence. Applying too early can be counterproductive, as it may lead to rejection.

Q3. What additional protections does the status extend to companies not already provided by IP/TM laws?

Once recognised, a well-known mark enjoys cross-class protection under sections 11(2) and 11(10) of the Trade Marks Act, providing enhanced safeguards:

Protection beyond class limits. No third party can register a similar mark even for unrelated goods/services, i.e. goods or services for which the well-known mark has been registered or used. However, the owner needs to file an opposition for this purpose.

Judicial weight. Courts more readily grant injunctions and damages in subsequent litigations once a mark is recognised as a well-known trademark and the injunction may be obtained for goods and services for the registered mark.

The mark has safeguards even against blurring (loss of distinctiveness) or tarnishment (reputational harm) without proving consumer confusion. The speed of enforcement may hasten due to such recognition.

Q4. In TM infringement cases, what approach should companies take for the court to grant this protection?

Companies should render evidence and facts as specified in sections 2(1)(zg) – the definition of a well-known mark and sections 11(6) and (7).

(1) The knowledge or recognition of that trademark, includinge in India obtained as a result of promotion;

(2) The duration, extent and geographical area of use (the number of actual or potential consumers) and promotion, including advertising or publicity and presentation, at fairs or exhibition of the goods or services;

(3) The number of persons involved in the channels of distribution of the goods or services; the business circles dealing with the goods or services.

(4) The duration and geographical area of any registration of or any application for registration of that trademark under this act; and

(5) The record of successful rights enforcement, in particular the extent to which the trademark has been recognised as well-known by any court or registrar.

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