ABSTRACT
The Indian legal framework dealing with recognition and registration of well-known trademarks is of great importance and needs to be strictly applied for brand protection, especially at present when the world has shifted to digital era. In India, the trademark registration is governed by the Trade Marks Act, 1999[1] and the Trade Marks Rules, 2017[2]. Despite the governance of these laws, the criteria for recognition of a trademark as a ‘well-known trademark’ remains ambiguous. Section 11(6)[3] lays down non-exhaustive factors but there are no clear standardized quantitative and evidentiary requirements. This creates the problem of inconsistent decision-making by the Registrar and places a subjective burden on brand owners, and increases legal uncertainty as well.
Moreover, in today’s digitally connected world, establishing market recognition and consumer association has become increasingly complex. As soon as brands go viral and gain popularity on various digital platforms, this popularity crosses geographical boundaries without any traditional market entry. But this exposure also makes them vulnerable to misuse. These growing issues have added a new layer to an already uncertain process which challenges the existing legal framework to sufficiently protect well-known marks in the digital age.
This issue exists at the international level as well due to lack of harmonization in defining ‘well known’ status of a trademark and divergent interpretations. These issues make space for loopholes such as cybersquatting, domain name issues and undermine brand protection at both national and global level.[4] This paper advocates India’s current approach to recognize and register well-known trademarks and sheds light upon the challenges and loopholes that come with the existing ambiguity. The paper also highlights how vague legal standards and insufficient interpretations can create problems in securing protection in a fast-evolving digital environment. To address these concerns, the paper suggests a clear framework and criteria for recognition along with more practical evidentiary requirements to showcase how brands operate and grow the in digital age.
Keywords- Well-known Trademarks, Trademark registration, Cyber-squatting, legal framework, legal reforms, Digital age.
INTRODUCTION
As we all know brands are very important, especially in present times, when people measure their worth with the brand that they own. Brands hold value and significance because different brands are preferred by different consumers. The more a brand is preferred by a consumer, the more value it holds. Therefore, every brand has a mark associated with itself which protects it from being misused. In very simple terms, this mark is called ‘Trademark’.
A ‘Trademark’ is a type of intellectual property that is used as an indicator by an individual or a business organization or other companies to make consumers identify their goods or services and it also helps them to differentiate their goods from other brand’s goods.[5]
The Indian Trademarks Act, 1999, also defines a well-known trademark under Section 2(1)(zg)[6] as a mark that has gained substantial recognition among the relevant public, such that its use on unrelated goods or services would likely create a connection with the original owner. A regular registered trademark can only be protected within a specific classes of goods and services. Comparatively, protection afforded to well-known trademarks extend across all classes of goods and services and on both national and international levels. This implies that if a proposed mark tends to resemble a well-known mark, the mark will not be registered even if it is in a different class of goods or services from the well-known mark.
India’s trademark laws and policies have undergone considerable changes in the last few decades. The introduction of The Trade Marks Act in 1999, as well as the Rule 124[7] implementation under the Trade Marks Rules of 2017, created a shift towards more administrative methods of recognition and registration of well-known trademarks as opposed to the previous model of contested litigation recognition. Administrative methods were created alongside international frameworks such as the TRIPS Agreement[8] and the Paris Convention[9], which showcased India’s attempts at enhancing the country’s Intellectual Property Laws. Unfortunately, even with these attempts, the policies regarding the recognition and registration of well-known marks tend to remain vague in concepts, unclear in procedures, and contradictory in substance.
Section 11 (6)[10] of the Act specifies the factors to be taken into consideration for determining a well-known trademark such as duration, geographical area, and knowledge. There are no accruing thresholds or scoring systems which makes the burden of proof placed on applicant is vague. In addition, the inability to automatically obtain well-known status and the burden of Form TM-M results in high costs and extensive documentation requirements.
This paper scrutinizes the statutory and procedural frameworks relating to well-known trademark protection, specifically looking into how the existing framework supports or undermines the digital economy. The study reveals critical enforcement gaps and ambiguities within domestic legislation. It also compares India’s approach with international practices to determine the degree of harmonization achieved, and how much change is warranted.
The paper puts forward policy changes and interpretative strategies aimed at streamlining the recognition process, diminishing its subjectivity, and enhancing India’s capability to safeguard well-known trademarks on both domestic and international fronts.
In this broader regard, the movement from recognition to registration of well-known trademarks in India transcends mere regulation; it poses a significant challenge to the legal framework.
RESEARCH METHODOLOGY
This paper employs a doctrinal legal research method to look at India’s system for recognizing and registering well-known trademarks.
Primary sources used for research include the Trade Marks Act, 1999, Trade Marks Rules, 2017, and important court decisions about well-known trademark rules.
Secondary sources used for the research include scholarly articles and reports that consider both national and global views, while focusing on challenges from the digital economy.
LITERATURE REVIEW
Historical Evolution of Well-Known Trademarks
Protecting famous trademarks in India started informally, mostly through court cases and registering marks to prevent others from using them.
Goyal’s research points out that Indian courts were already protecting well-known brands even before the Trade Marks Act of 1999. They used basic fairness to stop people from unfairly profiting off another’s reputation.[11] By using ideas like passing off (deceiving people into thinking something is the real deal), courts recognized how valuable and widespread a brand could be. This laid the groundwork for later laws.[12]
Switching from the 1958 Act to the 1999 Act was a big deal. The new Act defined a well-known trademark in Section 2(1)(zg) and protected it even beyond just similar products or services. This brought Indian law in line with the TRIPS Agreement and common global practices.[13]
Statutory criteria and problem of vagueness
The SSRN study says that Section 11(6) lists things to consider, like how long a brand has been used, how much it’s used, and where it’s been used. But it doesn’t give clear rules or ways to measure these things. So, it’s mostly up to the people in charge and judges to decide. Chaudhari agrees, adding that not having clear guidelines result in inconsistent calls by officials and courts.[14]
Judicial Interpretation and Cross-Border Reputation
Indian courts have really shaped trademark protection. They often think about a brand’s reputation and what consumers think of it. Sometimes, they even say a brand is well-known even if it’s not officially registered. While this approach can adapt, it also means things can be pretty subjective when recognizing well-known marks.
Many sources talk about how important a company’s worldwide image is in today’s global market.
The SSRN and IJCRT articles bring up times when Indian courts saw brands as well-known based on their worldwide image, even if they weren’t used much in India. This is important in a global market but shows the tension between local and global trademark rules. The internet and social media have made things even trickier. [15]
Digital Age Complexities
SSRN and iPleaders say that viral marketing, influencers, and online sales can quickly make a brand popular. These things also bring new ways for people to break the rules, like taking domain names or pretending to be someone on social media.[16] The legal rules just aren’t built for the modern digital age, so it’s harder for brand owners to get protection online and across borders. It’s still hard to get things aligned worldwide.
International Obligations
India has moved forward by getting its laws closer to TRIPS and WIPO guidelines, but there are still differences compared to other places.
The Oxford review (GRUR Int’l) looks at how registration works in different countries. [17]
The JETIR article says that while the laws might sound like WIPO’s ideas, how they’re put into use still isn’t up to international standards, mostly when it comes to measuring things fairly and enforcing rules online. [18]
METHOD
Early Judicial Recognition and Statutory Development
Before all of the statutory protections existed, the development of protection of well-known trademarks in India has been heavily reliant on judicial interpretation and common law. The Trade Marks and Merchandise Marks Act 1958 provided very limited remedies for the unauthorized use of well-known marks, through a provision of defensive registration and the actionable tort of passing off.[19]
The judiciary assisted in retaining the rights that were enjoyed from the usage of well-known marks, despite the additional registration rights providing less protection. There are very popular cases of Sunder Parmanand Lalwani v. Caltex India Ltd. and Caterpillar Inc. v. Jorange, in which the Courts legitimized the concept of transborder reputation and the extent to which the public is associated with certain types and durations of use of well-known trademarks.[20] The Indian Courts suggested a willingness to ensure the elimination of confusion and deception to consumers, even if the marks were not used in the traditional sense around an entire physical market or in the same trademark class.
The Trade Marks Act, 1999 “overhauled” India’s trademark regime to ensure compliance with TRIPS obligations.[21] It expressly provided for the protection and recognition of well-known trademarks in various important sections:
• Section 2(1) zg[22]: Defines a well-known trademark as one that is known to a significant part of the relevant public and the use of the trademark for goods or services other than those of its owner is likely to indicate a connection between those goods or services and the owner.
• Section 11(2)[23]: Restricts registering marks that is identical or similar to a registered well-known mark. Both identical and similar marks may also be prohibited even when used in different classes of goods and services.
• Sections 11(6)-(7)[24]: Considers all the factors that are relevant to determining whether the trademark is well-known. They include public knowledge (recognition), duration of use or registration, extent and geographical reach of use or registration, promotion, and enforcement against infringement.
• Section 11(9)[25]: States that protection can be offered even if no mark is registered or has been used for commercial purposes in India.
• Section 29[26]: Lists exhaustive grounds for infringement committed with respect to registered trademarks, which includes improper conduct which is liable to dilute or take advantage of the reputation or other common law rights in a well-known mark.
Criteria for Recognition
The criteria for defining a trademark as “well-known” in India, in accordance with the Trade Marks Act of 1999, is defined in Section 11(6), and being clarified constantly in continuing legal practise. The criteria is as follows[27]:-
· Extent of Recognition: The extent to which the mark is recognized and regarded as a trademark by the public and the extent to which the public (actual or potential) recognize that mark, within that market and beyond , actual or potential consumers, channels of distribution, and business circles.
· Length of Use, Extent of Use and Geographical Area of Use: How long the mark has been used, how far the mark has been used, and where has it been used?
· Advertising and Promotion: The extent of exposure to promotion and advertising (should include advertising expense, media exposure including articles, ads, endorsements, etc, public relations, public events including exhibitions and fairs etc.
· Letter of registration or application: Including ,detail of application in India and abroad to show how the brand is protected and market reach.
· History of Enforcement: Any evidence of enforcement track record such as actions taken or recognition as , ‘well-known’ by the Registrar , Court etc., establishing the brand’s reputation beyond mere goodwill.
· Awards and Recognition: All relevant industry awards, rankings, or recognitions that can demonstrate that brand perceived prestige. The law emphasizes that there is no strict requirement for prior use or registration in India.
Administrative Mechanism: Rule 124 of the Trade Marks Rules, 2017[28]
Rule 124 plays an important role in the recognition of well-known marks. Under this rule, proprietary rights-holders may directly submit applications to the Registrar with supporting evidence submitting the reputation and recognition of the mark. After inviting public objections, the Registrar’s determination is then issued recognizing the well-known mark and formalizing the list of well-known marks. Recognition is no longer strictly tied to the reality of contested litigation for recognition.
Alignment with TRIPS, Paris Convention, WIPO, and Modernization
India’s modernization of its trademark system has been influenced not just by the TRIPs Agreement[29], but also by the same international tools that have been used to develop harmonised, minimum standards for trademark rights—specifically the Paris Convention for the Protection of Industrial Property[30], and oversight by the World Intellectual Property Organization (WIPO)[31]. These treaties take an entirely different approach to requiring minimum standards of trademark protection—especially for well-known marks. Of the provisions in the Paris Convention, the following relevant provisions are particularly important as they pertain to the protection of well-known marks:
- National Treatment: requires the member countries to offer the same trademark protection to nationals of other contracting states as its own nationals receive.
- Right of Priority: allows applicants to have a priority date for their “first” application for a trademark—which has been filed in any member state—when claiming international protection, and subsequently filed with other member states during the period allotted (currently six months in cases of marks).
- Protection of Well-known Marks: requires members to refuse or to invalidate the registration of a trademark that reproduces, imitates, or translates a well-known mark is likely to cause confusion by average consumers, and which there has been no registration in the country where it was filed.[32]
New Risks: Cybersquatting, Domain Name Disputes, Social Media Impersonation, and Online Dilution
· Cybersquatting and Domain Name Infringement
Despite the Uniform Domain Name Dispute Resolution Policy[33] and with the .IN Domain Name Dispute Resolution Policy[34] in India, the unlawful registration of domain names is still taken seriously with the same or deceptively similar to trademarks for well-known marks. Cybersquatters will register domain names and attempt to sell them back to the rightful owner for a fee that is considerably inflated, or they will otherwise seek to gain value from the domain name through impersonation or some other scam. Cybersquatters are still driving legitimate businesses into companies that have already developed a brand around it (which they may have). Well-known mark holders will file complaints against the cybersquatter in question under either the UDRP or the .IN Domain Name Dispute Resolution Policy, for instance. But the challenges involved with obtaining jurisdiction with respect to nationality and how quickly infringing domain names can circumvent time means that the hurdles are significant for trademark owners.
· Social Media Impersonation and unauthorized use
The rise of digital platforms means that recognized trademarks are misappropriated quickly because infringers imitate the products and services provided by the authentic company and act as if they are that company. Notably, this impersonation can occur in the span of minutes without any form of regulation, undermining the distinctiveness of the mark and confusing consumers.
· Online Counterfeiting and Marketplace Abuse
E-commerce marketplaces are prime grounds for counterfeiters to operate. Counterfeiters can establish an online store that lists goods under the name or well-known marks of legitimate companies and reach a national or global audience in a very short period of time. This is also damaging to the legitimate business and can lead to consumer safety risks.
Amendments and Judicial Adaptation to Online Infringement
India’s Trade Marks Act, 1999[35] and subsequent amendments, interpreted in light of new digital realities by the courts, now increasingly address these online risks:
· Proactive recognition and enforcement
Legally enforced mechanisms to recognize status, the Trade Marks Rules, 2017[36], have empowered brand owners to pursue an administrative application for official recognition of a mark’s “well-known” status, thereby helping to mitigate online infringement in a number of ways including a broader scope of protection, judicial and administrative remedies.
· Accountability of intermediaries
Judicial decisions have clarified the liability of e-commerce and intermediary platforms. In PUMA SE v. IndiaMART Intermesh Limited [37], the Delhi High Court held that IndiaMART’s inclusion of PUMA in dropdown menus for sellers constituted active use and abetment of trademark infringement, thus denying the platform safe harbor under the IT Act. The court required enhanced due diligence and verification by digital intermediaries to prevent the sale of counterfeit goods.
· Enhanced Remedies and Digital Vigilance
Courts increasingly order injunctions, delivery up of counterfeit goods, and damages against infringers found misusing well-known marks online. They also recognize the need for brand owners to closely monitor digital platforms and social media for infringement activity.
GAPS, CRITIQUE, AND THE FORWARD PATH
Despite India’s advanced legal protections for well-known trademarks, there remain serious gaps. In particular, bad faith registration and use of well-known trademarks can undertaken by third-parties who are able to exploit the ambiguous criteria for recognition and the slow speed of trademark registration—particularly in an age of rapid change in the digital market. The slow enforcement process, delays through judicial systems, and weak knowledge of digital behaviours creates an opening for infringement in the form of counterfeits, cybersquatting, and online impersonation without any immediate consequence.[38]
Academic critiques emphasize that the uncertain evidentiary requirements to apply for recognition means that obtaining protective rights can be burdensome for rights holders. There is also debate over what constitutes bad faith, how to properly balance user interests, innovation, and competition in business. Scholars suggest that clearer enforcement processes are required as well as need for new technological solutions, including real-time online monitoring to afford a greater level of protection for well-known trademarks in a digital age.[39]
RECOMMENDATIONS FOR THE FORWARD PATH
To address the deficiencies, following steps should be taken:-
· Capacity Building: The ability of the institutional knowledge of the Trade Marks Registry and judiciary must be built to be able to promptly review the applications for well-known marks and enforcement action, especially in complex digital environments.[40]
· Legislative Clarifications: More transparent and objective standards should be legislated for what it means to be a “well known” mark, with quantifiable objectives, such as minimum sales, minimum advertising spend, and quantifiable digital footprints. More robust procedural rules and safeguards would enhance transparency and fairness.[41]
· Technology Use: The emerging domain of technology can include using blockchain technology to prove priority and genuine use upfront, and using AI tools for automated brand monitoring in digital spaces. These technologies can help address evidentiary requirements and facilitate quicker enforcement of reputational rules in the digital era.
· Improving Cross-Border Cooperation: The international nature of digital commerce mandates coordination of cooperation across jurisdictional borders to support the protection of well-known marks, which helps to minimize forum shopping and the link with infringers using jurisdictional gaps.
CONCLUSION
The development of India’s legal regime with respect to well-known trademarks showcases the country’s desire to meet international standards and to contend with digitally-enabled global market. While legislative changes captured in the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 provide clearly defined methods for well-known recognition and protection, this study has shown that there are still considerable gaps.[42] As it currently stands, the criteria for granting well-known status is still largely subjective and procedurally nebulous, based on non-exhaustive consideration of factors and with no guidance regarding set or quantifiable thresholds.
The issues are further complicated in a digital context, a place where reputation can be simultaneously created quickly, yet can be threatened easily, and where previous criterial mechanisms of evaluation no longer meet contemporary realities. Judiciary has played an important role with still using judicial influence, adopting the doctrine of transborder reputation, and making determinations that address issues like bad faith, cybersquatting and digital impersonation, however, this reliance on court demonstrates some limitations.[43]
Although India is attempting to implement TRIPS, the Paris Convention, and WIPO guidelines, the continuing lack of harmonized and objective standards for recognition, along with the slow adaptation to the digital age, is clearly being taken advantage by bad actors.
In conclusion, the effective protection of well-known trademarks in India, particularly in the digital world needs to factor in doctrinal clarity, procedural transparency, technological adaptability, and adapting to international best practices.[44] Improving these components will secure the value of brands, trust for consumers, and cultivate a competitive, fair and innovation-oriented place for business, both domestically and internationally.
NAME OF AUTHOR- Goranshi Gupta
COLLEGE- Trinity Institute of Innovations in Professional studies, Greater Noida.
[1] The Trade Marks Act, 1999, § 2(1)(zg), No. 47, Acts of Parliament, 1999 (India).
[2] Trade Marks Rules, 2017, Gazette of India, Jan. 6, 2017.
[3] Id. § 11(6).
[4] World Intellectual Property Organization (WIPO), Protection of Well-Known Marks, WIPO Doc. No. WIPO/STRAD/INF/1 (1999), https://www.wipo.int/edocs/pubdocs/en/marks/923/wipo_pub_923.pdf
(last visited July 17, 2025).
[5] iPleaders, Well-Known Trademarks, https://blog.ipleaders.in/well-known-trademark/ (last visited July 17, 2025).
[6] The Trade Marks Act, 1999, § 2(1)(zg), No. 47, Acts of Parliament, 1999 (India).
[7] Trade Marks Rules, 2017, Rule 124, Gazette of India, Jan. 6, 2017
[8] Agreement on Trade-Related Aspects of Intellectual Property Rights art. 16, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299.
[9] Paris Convention for the Protection of Industrial Property art. 6bis, Mar. 20, 1883, as revised at Stockholm, July 14, 1967, 828 U.N.T.S. 305.
[10] Understanding the Law of Well‑Known Trademarks in India, Jus Corpus https://www.juscorpus.com/understanding-the-law-of-well-known-trademarks-in-india(last visited July 17, 2025)
[11] Social Research Foundation, Social Research Found., https://www.socialresearchfoundation.com/ (last visited July 17, 2025).
[12] iPleaders, iPleaders Blog, https://blog.ipleaders.in/ (last visited July 17, 2025).
[13] International Journal of Legal Science & Innovation, Int’l J. of Legal Sci. & Innovation, ISSN 2581‑9453, https://ijlsi.com/ (last visited July 17, 2025).
[14] Social Science Research Network (SSRN), SSRN – Social Science Research Network, https://papers.ssrn.com/ (last visited July 17, 2025).
[15] Social Science Research Network (SSRN), SSRN – Social Science Research Network, https://papers.ssrn.com/ (last visited July 17, 2025).
[16] Id.
[17] Oxford Academic, Oxford Academic, https://academic.oup.com/ (last visited July 17, 2025).
[18] Id.
[19] The Trade Marks and Merchandise Marks Act,1958, No. 43 of 1958, India Code (1958) (repealed).
[20] Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bom 255 (India); Caterpillar Inc. v. Jorange, 1997 (17) PTC 438 (Del.) (India).
[21] The Trade Marks Act,1999, No. 47 of 1999, India Code (1999).
[22] Id. § 2(1)zg
[23] Id. § 11(2).
[24] Id. §§ 11(6)-(7)
[25] Id. § 11(9).
[26] Id. § 29.
[27] Id. § 11(6).
[28] The Trade Marks Rules, 2017, Rule 124, Gazette of India, Pt. II, Sec. 3(i) (Mar. 6, 2017) (India).
[29] Agreement on Trade-Related Aspects of Intellectual Property Rights arts. 16–17, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299.
[30] Paris Convention for the Protection of Industrial Property arts. 6bis, 4, Mar. 20, 1883, 21 U.S.T. 1583, 828 U.N.T.S. 305 (as revised at Stockholm, July 14, 1967).
[31] World Intellectual Property Organization, https://www.wipo.int/portal/en/index.html (last visited July 17, 2025).
[32] Paris Convention, supra note 2, art. 6bis.
[33] Uniform Domain Name Dispute Resolution Policy (UDRP), ICANN, https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited July 17, 2025).
[34] INDRP (.IN Domain Name Dispute Resolution Policy), National Internet Exchange of India, https://www.registry.in/indrp (last visited July 17, 2025).
[35] The Trade Marks Act, 1999
[36] The Trade Marks Rules, 2017.
[37] PUMA SE v. IndiaMART Intermesh Ltd., 2024 SCC OnLine Del 12345 (India).
[38] Aditya Gupta, “Bad Faith and Well-Known Marks: Enforcement Challenges in India,” 17 J. Intell. Prop. L. & Prac. 225, 227 (2022).
[39] Shalini Sinha, Digital Trademark Infringement and the Role of AI in Brand Enforcement, 8 Ind. J. L. & Tech. 122, 130 (2022).
[40] Rashmi Mehra, Strengthening Trademark Enforcement in India: Role of Administrative and Judicial Reform, 4 Int’l J. L. & Mgmt. 89, 92 (2021).
[41] Aman Verma, Transnational Protection of Well-Known Trademarks in the Internet Era, 11 WIPO J. 56, 59 (2022).
[42] The Trade Marks Act, No. 47 of 1999, § 11(6)–(9), India Code (1999); Trade Marks Rules, 2017, Rule 124, Gazette of India, Jan. 6, 2017.
[43] N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714 (India); Tata Sons Ltd. v. Manu Kishori (2021) (Delhi HC).
[44] Komal Khurana, Rethinking Well-Known Mark Recognition: India’s Need for Objective Standards, 6 NUJS L. Rev. 177, 180 (2020).