A Review Over Protection Of Well-Known Trade Marks In India

Abstract

This paper explores the legal framework related to the protection of well- known trade marks in India. It explains the concept of trade mark and its importance in establishing the identity of the brand and prevention of consumer’s confusion related to the similar brand names. It delves into the concept of well-known trademarks and highlights it origin and factors which are used to determine whether the Trademark holds a special status. It explains that how well- known trade marks receives a broader protection compared to regular trade marks. The paper details the relevant provisions of Trade marks Act, 1999 and highlights the case studies to illustrate how courts in India have applied these legal principles.

Introduction

The rise of mass production during the Industrial Revolution fuelled the development of Trademark.[1] Manufacturers and traders needed a way for consumers to easily recognize the source of their products and differentiate them from the growing sea of similar offerings in the market. Basically, trade mark is a recognizable symbol, word or phrase that legally distinguishes a particular brand’s product or service from other.[2]

By creating the unique trade mark of their own, businesses had not only established themselves as distinct players in the market but also empowered customers to make informed choices by recognizing established brands associated with quality and trust. Businesses can leverage trade mark to build a unique identity, making them easily recognizable in a crowded marketplace. This distinct brand recognition empowers customers to make informed decisions by easily identifying established trade mark associated with quality and a positive reputation. Over time, a strong trade mark becomes a valuable asset for a business, personifying the goodwill it has built.[3]

In India, a registered trade mark grants legal protection for (10) ten years from the date of filing. This validity period is reflected on the registration certificate issued by the Registrar of Trademarks and to maintain this protection beyond the initial ten years, trade mark owners must have to apply for a renewal with the Registrar before the registration expires. This renewal process allows for indefinite ten-year extensions which ensures a long-term protection for the brand.[4]

Well-Known Trade Marks

The concept of  “well-known trade mark” is originated from the legal principle of “reputation” which was first established in the case of J.G v. Stanford.[5] This case recognized that trade mark law exists to prevent dishonest business practices which means that the goodwill which is associated with a particular brand and the likelihood of consumers are misled by a similar mark.[6] Well-known trade marks serves as an effective facilitator of consumer acquisition, revenue growth and competitive deterrence.

Globalization and the fight against unfair competition have heightened the importance of protecting Well-known Trademarks.[7] In India, Well-known Trade-marks receives a greater protection compared to standard trademarks as Indian trademarks law grants additional rights to Well-known Trade Marks, including:

1. Protection from having identical or very similar trade marks registered or used by others.
2. Safeguarded against unauthorised or improper use.

This special protection was initially introduced under the “Trade mark and Merchandise Act, 1958” and later carried over by the “Trademark Act, 1999”. While the standard trademarks receive protection within the category of goods or services as what they represent and the region of their registration, the well-known trademarks enjoy a broader scope of protection which extends across different categories and potentially even exceeds geographical boundaries.[8] As of 2024, there were two hundred eighty-one legally recognized Well-known Trade Marks in India.

Factors Determining Well Known Trade Marks

In order to provide further guidance on the degree of well-known Ness, the World Intellectual Property Organization (WIPO) issued a set of guidelines in 1999 which was the Joint Recommendation in which Article 2 focuses on how one does ascertain if a trade mark qualifies as well-known within a member country.

India incorporates these factors into its own legal framework. Specifically, sections 11(6) to 11(9) of the Trade Marks Act, 1999 outlines the criteria used to assess whether a trade mark is considered well-known in India or not.[9]

According to Section 11[10] of the Act, the particulars such as recognition, usage, promotion, registration, enforcement, consumers, distributors, business and binding nature need to be considered before taking cognizance of a trade mark as a well-known trade mark[11]

Scope Of The Trade Mark

The judgement delivered by Justice Mohd. Shamim incorporated lines from Romeo and Juliet II-

“What’s in a name?

That which we call a rose

By any other name would smell as sweet.”[12]

The judge included the passage in the ruling to emphasize that a business’s fundamental identity persists regardless of alterations to its name. The point was made that renaming a company does not change its core nature or essence even if its name is changed.[13]

The scope of protection given to well-known trade marks are significantly wider than that of standard trademarks. Formal registration is a fundamental requirement for a trade mark to acquire the lawful safeguard. In case where a trademark is unregistered, the fact that there is previous use of trade mark might not be sufficient to challenge an application by another person to register an identical or similar trade mark for comparable goods and services. If the unregistered trade mark has been used and acquired some recognition, though not attained the status of well-known trade mark, its owner has to prove that a preventive registration by another person was done unfairly to seek protection under Trade Marks Law. However, the approach differs for the trademarks recognized as well- known trade mark in China as even without registration, the owner may still prevent the registration and use of identical or similar trade marks for comparable goods and services. In the case where an standard trademark gets protection only to the extent to identical or similar trademarks used for comparable goods and services. However well-known trademarks enjoy a broader shield as the trade mark law not only provides protection to goods and services which are registered but also to non-identical or dissimilar goods or services. The proposed regulations concerning to the dilution of registered well-known trade mark aims to prevent the registration or use of any trademark which may result in unfair exploitation or harm to the unique character or reputation of the well-known trademarks.[14]

Well Known Trade Mark Protection: Passing Off And Infringement

The effective implementation of trade mark legislation is of greatest importance due to the inherent weaknesses and limitations of existing enforcement practices. A trade mark constitutes a unique form of intellectual property, capable of indefinite ownership upon proper renewal. In the context of globalization and the ongoing effort to curb unfair business practices, the protection of well-known trademarks assumes a heightened significance.[15] The Trademarks Act offers statutory safeguards for all trade marks, holding those established under common law and recognized as well-known. Unlike infringement actions, which depends on the violation of statutory rights, passing off claims provide an alternative legal remedy for foreign trade mark holders, even in the absence of domestic registration. This comprehensive framework bounds both statutory and common law principles and underscores the commitment to foster a robust legal environment for the protection of intellectual property.

The legal doctrine of passing off is rooted in common law principles and protects established commercial goodwill from mis-representation. A cause of action arises, when conduct of a party in the course of trade creates a likelihood of confusion which damages the goodwill associated with another party’s goods or services.  Damages awarded in passing off actions are not predetermined as it reflects the potential for varying degrees of harm. The fundamental principle underlying it claims that fair competition necessitates honest conduct. Although it is not expressly defined within the Trade mark Act of 1999 but the concept of passing off is acknowledged in specific sections, highlighting its continued relevance alongside statutory trade mark protection.

The Trade Marks Act of 1999 expressly preserves existing common law remedies for passing off as Section 27(2) clarifies that the Act’s provisions do not extinguish the right to sue for passing off, Section 134(1)(c) establishes the jurisdiction of courts to hear passing off claims arising from trade mark use and Section 135 outlines the remedies available in such cases.

While passing off actions frequently involve intentional misrepresentation, the well-established legal principles confirms that fraudulent intent is not a mandatory element for a successful claim. On the other hand, the absence of such intent does not automatically serve as a defence. However, evidence of deliberate deception can be a significant factor in demonstrating a likelihood of deception by the defendant.[16]

Infringement V. Passing Off: A Brief Comparison

The Supreme Court, in the landmark case of “Durga Dutt Sharma v. N.P. Laboratories[17],” explained the crucial distinction between trade mark infringement and passing off. The Court emphasized that passing off is a common law remedy rooted in the concept of deception. In simpler terms, it arises when a party misrepresents their goods as those of another. In contrast, trade mark infringement is a statutory cause of action specifically granted to the registered proprietor of a trade mark allowing them to enforce their exclusive right to use it.[18]

India’s Well-Known Trade Mark Regulation

The well-known trade mark is dealt in various provisions of statutes in India: –

1. Protection Of Well-Known Marks Under The Old Indian Trade Mark Statute: –

Before the enactment of the Trade Mark Act, the statute governing trade marks in India was the Trade and Merchandise Mark Act, 1958. The Indian Merchandise Marks Act, 1889 and Trade Marks Act, 1940 were subsequently repealed vide the Trade and Merchandise Mark Act, 1958. The 1958 Act did not provide for definition of well-known trade mark but the provisions as regards the defensive registrations under Section 38 of the Trade Marks Act, 1940 were retained in Section 47 of the 1958 Act which says as follows: –

Section 47(1)[19] – If an invented word is used as a trade mark which becomes so well-known for certain goods that its use on other goods would suggest a trade connection with the original owner, then despite the owner is not using it for those other goods, the mark can be registered as a defensive trade mark for them and once it is registered as a defensive trade mark it shall not be subject to removal for non-use under section 46. This provision is made to protect the distinctiveness and prominence of well-known invented trademarks across different classes of goods and prevents potential consumer confusion regarding its trade connections.[20]

Even before Trade Mark Act existed for well-known trade marks, Indian courts protected them through “passing-off” legal actions. The integration of these court cases with India’s international commitments resulted in the creation of official provisions for well-known trademarks within the Trade Marks Act.[21]

India also adheres to the TRIPS and Paris Convention to safeguard well-known trade marks and to strengthen this protection, it replaced the Trade Marks Act of 1958 with the Trade Marks Act,1999 and the Trade Marks Rules,2002. The new law offers legal protection to well-known trademarks, regardless of whether they are Indian or foreign brands which means that both domestic and international companies can benefit from this protection for their well-known trade marks.[22]

• Protection of Well-Known Marks Under The Trade Mark Act: –

The introduction of the Trade Marks Act in September 2003 marked a turning point for the protection of well-known trade marks in India. This new law offered stronger and more comprehensive safeguards for the valuable brands and mainly contained five essential provisions to deal with the well-know trade marks which are Sections 2(l)(zg), 11(2), 11(6), 11(7) and 11(9).

These sections says as follows: –

1. Section 2(1) (zg)[23]– “Collective mark” means a trade mark that tells us that the particular goods and services comes from a member of certain group or organisation (not being a partner within the meaning given in Indian Partnership Act, 1932) that owns the mark and keeps apart from everyone else’s.
2. Section 11(2)[24]– A trade mark that is identical or similar to an earlier trade mark, even if intended for different goods or services and owned by different proprietor, shall not be registered if using the earlier trade mark without due cause would unfairly exploit or harm the distinctive character or nature of the well- known trade mark.
3. Section 11(6)[25]– The Registrar shall consider the relevant information such as recognition, usage, promotion, registration and enforcement of the trade mark, while deciding if trade mark is a well-known trade mark or not.
4. Section 11(7)[26]– The Registrar shall consider the number of consumers, distributors and businesses dealing with goods or services on which trade marks applies, while determining if a trade mark is known or recognised in a relevant section of the public according to sub-section (6).
5. Section 11(9)[27]– While determining, whether a trademark is well- known, the registrar doesn’t require a proof of its use or registration in India, any application filed here, it’s being known by public, registration or applied elsewhere in other nation.

Section 29(4)[28] protects the registered trade marks with “a reputation in India” from infringement by a like mark used on unlike goods and services.

The definition in Section 2(1) (zg) is similar to the definition from Section 47 of Trade and Merchandise Mark Act. However, this definition focuses on whether using a well-known trade mark on various products would mislead consumers. Sections 11(6), (7), and (9) of the Trade mark Act provides some guidance for officials to decide if a trade mark qualifies as well-known.

Section 11(2) of the Act protects well-known trade marks by preventing similar marks from being registered for different products. Meanwhile, Section 29(4) addresses trade mark infringement but not explicitly mention “well-known marks” instead referring to trade marks that have an established reputation in India.[29]

Benefits Of Well-Known Trade Marks

1. Brand Recognition and Recall- It is a powerful tool for building brand recognition. Imagine walking through a busy marketplace with a sea of products and vendors seeking for your attention. Suddenly, you spot a familiar logo, a brand you recognize and trust. This instant recognition is the magic of a well-known trade mark. It cuts through the clutter, allowing consumers to easily identify the brand and the products or services the offered to them.[30]
2. Stronger Brand and Customer Loyalty- This recognition fostered by a well-known trade mark goes beyond simple identification. It builds strong brand loyalty. Consumers who recognize the brand are more likely to trust it and choose the products or services over those of lesser-known competitors. This loyalty translates into repeat business and a stronger customer base for the company.[31]
3. Unique Product- It also helps to create a distinctive identity for the goods or service.  The trade mark becomes a symbol of the brand’s qualities and values, differentiating it from competitors.  Furthermore, this strong brand identity makes it easier for consumers to find the well-known brands. Both in physical stores, where familiar packaging can catch their eye and online searches, where a recognized brand name will stand out amongst generic options.

Case Laws

N.R. Dongre V. Whirlpool Corporation[32]

In this case, the mark of the plaintiff was “Whirlpool” which was registered in India in the year 1977 and was later not renewed. Although they had advertised about themselves a number of times in international magazines. Defendants sought to use tha plaintiff’s mark on their washing machines. The court held that the use of the mark Whirlpool by the defendant indicates their intention to pass off their washing machines as the goods of plaintiff. The court also noted that there is a fact that there was the prior use of trade mark by the plaintiff and their trade mark have the transborder reputation which also extends to India. Thus, the court passed an injunction order against the defendant.

1. Daimler Benz v. Hybo Hindustan[33]

In this case, the plaintiff was the manufacturer of the Mercedes Benz cars. He filed a suit against the defendant for the permanent injunction on the use of the mark ‘Benz’ along with the device of a ‘three pointed’ human being on underwear.[34] The Court granted injunction against the defendants who were using these marks for selling underwear.[35]

It is a foundational case for the concept of trade mark dilution and its principles are still referenced in legal battles involving well-known trade mark. Notably, this case might be the first and only instance in India where a defendant was prevented from using a well-known brand’s mark solely to benefit from its reputation, without necessarily causing confusion among consumers.[36]

Tata Sons Ltd V. Manoj Dodia[37]

In this case, the court determined that a well-known trade mark is one that is extensively recognized by the relevant public, which includes consumers, manufacturing and business circles and those involved in selling the product or service associated with the trade mark. The advancement of technology, particularly in print and electronic media has led to a wider reach for these well-known trade marks, granting them a reputation that transcends national borders. The court ruled that these marks necessitate protection not just in the countries where they are registered but also in countries where they are widely recognized by the relevant sectors. This protection encourages the owners of well-known trademarks to expand their businesses into new jurisdictions.

Pepsico Inc. And Ors. Vs. Jagpin Breweries Limited And Ors.[38]

In this case, PepsiCo sued an Indian liquor maker for using “MIRINDA” for their liquor, claiming trade mark infringement on their famous beverage brand. PepsiCo argued their long-standing reputation and registrations deserved protection, while the defendant claimed separate use since 2007 and no customer confusion due to different product categories.

Despite the liquor company’s arguments about prior use and contract obligations, the court found PepsiCo’s prior registrations and brand reputation stronger and an injunction was granted, prohibiting the liquor company from using “MIRINDA” or similar variations.

Conclusion

Trademark plays a crucial role in distinguishing a brand’s products or services from others and India has established a strong legal framework to protect them, with even greater safeguards for well-known trademarks. It goes beyond standard protection by extending broader security against misuse and dilution. The factors such as public recognition, market presence and legal defence history determines the extent of protection. The Trade Marks Act, 1999 offers a comprehensive framework which protects the both standard and well-known trademarks, reinforcing India’s commitment to intellectual property rights and fair competition in the marketplace.

Bibliography

Articles

1. Suryansh Tiwari, Protection of Well-Known Trade Marks In India, 2indian J.L.& Legal Rsch (2021).
2. Varsha Dogra, Protection of Trade Marks: A Comparative Analysis of India And The United States Of America,11gnlu J.L. Dev. & Pol. (2021).
3. Banerjee Soumya, Trans Border Reputation, Journal I.P.R, 11(4) (2016).
4. Sunil Prakash Dhadwad, Passing off And Infringement Of Well-Known Trade Mark’s In India, 1 Int’l J.L. Mgmt. & Human. (2018).
5. Ipshita, An Insight into Well Known Trade Marks, 5 Ind. J.L And Legal Rsch. (2023).
6. Vivek Kumar Choudhary, Protection Of Well-Known Trade Marks and Weakening Of Honest Concurrent User Defense, 15 Journal I.P.R (2010).
7. R. Anuja, Infringement of Trade Marks And Trade Names: A Comparative Approach To The Trade Mark Laws In India And European Union, 25 Annals of R.S.C.B. (2021).
8. Latha R. Nair, Tracking The Protection of Well-Known Marks In India: A Befuddled Path To Nirvana, 101 Trade Mark Rep. (2011).

Books/Statutes

1. V.K. Ahuja, Law Relating To Intellectual Property Rights, LexisNexis, 2^nd Edn., 2016 (India).
2. Dr. J.P. Mishra, An Introduction to Intellectual Property Rights, Central Law Publications, 3^rd Edn., 2012 (India).
3. The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 (India).
4. The Trade and Merchandise Marks Act, 1958, No. 43, Acts of Parliament, 1958 (India).
5. The Trade Mark Rules, 2017.

Website

1. https://www.manupatrafast.com/?t=desktop

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[1] Suryansh Tiwari, Protection of Well-Known Trade marks In India, 2 IJ.L. & Legal R. sch. 01, 02 (2021).

[2] Varsha Dogra, Protection of Trademarks: A Comparative Analysis of India and The United States of

America, 11 GNLU J.L.Dev. & Pol.100,106 (2021).

[3] India: Trade Mark Infringement In India, Trade Mark Infringement In India – Trademark – India (last visited May 2, 2025).

[4] What Is The Validity of A Trade mark?, What is the validity of a Trademark? – India Filings (last visited May 2, 2025).

[5] J.G v. Stanford, (1617) Cr. Jac 468, 79 Er 400.

[6] Banerjee Soumya, Trans Border Reputation, Journal I.P.R., 11(4), 274-279 (2016).

[7] Sunil Prakash Dhadwad, Passing off And Infringement of Well-Known Trade Mark’s In India, 1 Int’l J.L. Mgmt. & Human. 23 (2018).

[8] Well-Known Trademarks: Examples And Process, Well-Known Trademarks: Examples & Registration Process (last visited May 2, 2025).

[9] Ipshita, An Insight Into Well Known Trademarks, 5 Ind J.L & Legal Rsch. 01, 02 (2023).

[10] The Trade Marks Act, 1999, § 11, No. 47, Acts of Parliament, 1999 (India).

[11] Vivek Kumar Choudhary, Protection of Well-Known Trademarks and Weakening of Honest Concurrent User Defense, 15 Journal I.P.R 293, 294 (2010).

[12] Lloyd Insulations Limited v. Punj Lloyd Insulation Pvt. Ltd., [1999] ILR 1 410 (Del).

[13] R. Anuja, Infringement of Trademarks and Trade Names: A Comparative Approach to The Trademark Laws In India and European Union, 25 Annals of R.S.C.B.18036, 18039 (2021).

[14] Supra note 7.

[15] Sunil Prakash Dhadwad, Passing off and Infringement of Well-Known Trade Mark’s In India, 1 Int’l J.L. Mgmt. & Human. 23 (2018).

[16] Sunil Prakash Dhadwad, Passing off and Infringement of Well-Known Trade Mark’s In India, 1 Int’l J.L. Mgmt. & Human, 30-32 (2018).

[17] Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980.

[18] Supra note 16, at 35.

[19] The Trade and Merchandise Marks Act, 1958, § 47(1), No. 43, Acts of Parliament, 1958 (India).

[20] Latha R. Nair, Tracking the Protection of Well-Known Marks In India: A Befuddled Path to Nirvana, 101 Trademark Rep., 1419 (2011).

[21] Id.

[22] Supra note 9.

[23] Supra note 10, § 2 (1) (Zg).

[24] Supra note 10, § 11(2).

[25] Supra note 10, § 11(6).

[26] Supra note 10, § 11(7).

[27] Supra note 10, § 11(9).

[28] Supra note 10, § 29(4).

[29] Supra note 16.

[30] Well-Known Trade Marks In India: A Comprehensive Guide, Well-known Trademarks in India: A Comprehensive Guide – Zatapult, (last visited April, 15 2024).

[31] Well Known Trade Mark Essential Factors, Importance, Https://Vakilsearch.Com/Blog/Importance-Of-Well-Known-Trade Mark (last visited April 22, 2024).

[32] N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714.

[33] Daimler Benz v. Hybo Hindustan, (1994) PTC 287.

[34] Supra note 1.

[35] Supra note 11.

[36] Supra note 16.

[37] Tata Sons Ltd v. Manoj Dodia 2011(46) PTC 244 (Del) at 247.

[38] PepsiCo Inc. and Ors. v. Jagpin Breweries Limited and Ors. CS (Comm) 288/2022.

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Author: Surbhi Kumari is a 4th-year BA.LL.B (Hons.) student at the Central University of South Bihar, Gaya.