In 1977, the Whirlpool Corporation (hereinafter, “Whirlpool Corp.”) failed to renew their trademark ‘WHIRLPOOL’ in India, causing the registration to expire. While Whirlpool Corp. had been using its trademark since 1937, and secured registration of their trademark in India on 1956, however, their failure to renew it in 1977 proved to be a mistake as it enabled N.R. Dongre and others to register the trademark ‘WHIRLPOOL’ in 1988. Fortunately for Whirlpool Corp., it was noted by the Court that their trademark ‘WHIRLPOOL’ was a well-known trademark, and therefore, an injunction was granted in their favour. The present case of N.R. Dongre and Ors. Vs. Whirlpool Corporation and Ors. aptly depicts the high level of protection enjoyed by well-known trademarks; that is, despite Whirlpool Corp.’s failure to renew the registration for the trademark ‘WHIRLPOOL’, the trademark was nevertheless protected by the law, owing to the reputation and goodwill acquired by it.

The article aims to shed light on the nuances of well-known trademarks. It is divided into three parts: Part I discusses the origin and statutory provisions governing well-known trademarks in India; Part II analyzes the benefits of gaining a well-known trademark status for businesses; Part III details out the procedure for seeking a well-known trademark status, and Part IV concludes the article.


The history of the doctrine of well-known trademarks can be traced back to the Paris Convention for the Protection of Industrial Property (hereinafter, “the Paris Convention”) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter, “TRIPs”).

Initially, the doctrine was created under Article 6bis of the Paris Convention by authorizing member states “to refuse or to cancel the registration, and to prohibit the use” of a later trademark if it was likely to create confusion with an earlier trademark that was well-known in the country of “registration or use” despite the non-registration of the earlier trademark in the member state, which would have otherwise guaranteed its protection. It is pertinent to note that the doctrine – as provided under the abovementioned Article 6bis – solely concerns itself with the trademark protection of goods, not services. Nevertheless, by way of Article 16 of the TRIPs, the scope of the doctrine was broadened to, (a) Provide trademark protection to services and; (b) Provide trademark protection in cases where the usage of the trademark would imply a connection between the “goods or services and the owner of the registered [well-known] trademark” and could potentially damage the interests of the owner.

In the Indian context, the statutory provisions that define and govern well-known trademarks are provided in The Trade Marks Act, 1999 (hereinafter, “the Act”). Under Section 2(zg) of the Act, a well-known trademark, with respect to goods and services, is defined as a “mark which has become so to the substantial segment of the public which uses such goods or receives such services that 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.”

Further, Section 11 of the Act provides the conditions that must be followed by the Registrar when deciding on the issue of whether a trademark is a well-known trademark or not. While Section 11(6) – (8) discusses the conditions that must be taken into consideration when determining the issue of whether a trademark is well-known or not, Section 11(9) provides the conditions that must not be taken into consideration when deciding the same. According to Section 11(6), the Registrar, when determining if a trademark is well-known, is required to take into consideration relevant facts, which include the following:

  1. The knowledge or recognition of the trademark in the relevant section of the public, including awareness gained in India as a result of the trademark’s promotion.
  2. The duration, extent, and geographical area of any use of that trademark.
  3. The duration, extent, and geographical area of any promotion of the trademark.
  4. The duration and geographical area of any registration or application for registration of the trademark under this Act, insofar as they represent the use or recognition of the trademark.
  5. The record of the successful enforcement of trademark rights, specifically the degree to which the trademark has been recognized as a well-known trademark by any court or Registrar as a result of that history.

Further, under Section 11(7), the Registrar, while determining if a trademark is known or recognized in a “relevant section of the public” under Section 11(6)(i), is required to take into account the following details concerning the trademark:

  1. The number of actual or potential consumers of the goods or services.
  2. The number of persons involved in distributing the goods or services;
  3. The commercial sectors responsible for dealing with the goods or services.

Finally, under Section 11(8), the Registrar, for the purpose of registration, should consider a trademark as well-known if it has been previously determined as such – either by a Court or a Registrar, in at least one relevant section of the public.

Whereas, the Registrar, under Section 11(9), while deciding whether a trademark is well- known or not, is not required to take into consideration the following:

  1. The usage of the trademark in India.
  2. The registration of the trademark in India.
  3. The filing of the application for registration of the trademark in India.
  4. The trade mark is well-known, or registered, or with respect to which an application for registration has been filed in, any jurisdiction excluding India.
  5. The general population of India is aware of the trademark.


In India, to date, there are 117 trademarks registered as well-known trademarks, including Cartier, Whirlpool, and Kit Kat. This leads to the question – Is it essential for businesses targeting the Indian market to register their trademark as a well-known trademark? To answer the question, it is imperative to get a holistic understanding of the benefits enjoyed by well-known trademarks under the Act.

Firstly, under Section 11(2), a relative ground for refusal of trademark vis-à-vis well-known trademarks is incorporated – it provides that a trademark that is, (a) Identical or similar to an earlier trademark, and; (b) Is to be registered for goods or services that are dissimilar to those for which the earlier trademark was registered, shall not be registered if the earlier trademark enjoys a well-known trademark status in India, and if the usage of the later trademark without a justifiable reason would harm the distinctive character or repute acquired by the earlier well-known trademark.

Secondly, under Section 11(10), the Registrar, while evaluating an application for registration of a trademark and any opposition thereto, is obligated to protect well-known trademarks from trademarks that are either identical or similar, and must take into consideration the mala fide intent of the applicant or the opponent affecting the rights related to the trademark.

Therefore, owing to the high level of protection provided to well-known trademarks under Section 11(2) and Section 11(10), it is advised for businesses targeting the Indian market to register their trademark as a well-known trademark.


The determination of well-known marks – before the introduction of Trademark Rules, 2017 (hereinafter, “the Rules”)  was primarily through judicial pronouncements. However, after the amendment of the Rules, trademark owners can now, under Rule 124, fill out form TM-M to request the Registrar to determine if their trademark is well-known  or not. The general guidelines for filing the application are:

  1. The application must be filed on TM-M with fees prescribed under the First Schedule (Rs. 1,00,000/-).
  2. The application     must     be     submitted    only     on     the    official     website (
  3. The application must be submitted along with the following documents:
    1. Statement of case describing the applicant’s right on the trademark and supporting their claim that their trademark is well-known. Statement of case should include details of successful enforcement of the trademark-related rights.
    2. Evidence supporting the applicant’s rights and claim.
    3. Details of successful enforcement of the trademark-related rights – specifically to the extent that it has been recognized as a well-known trademark by a Court in India or Registrar of Trademarks.
    4. Copy of the Judgement wherein the trademark has been determined as well- known by any Court in India or Registrar of Trademarks.
    5. The size of the documents submitted must be in PDF format with a resolution of 200 X 100 dpi on A4 size Additionally, the file size should be within the limit of 10 MB.

After the filing of the application, the following steps take place:

  1. The office will consider the applicant’s claim based on the documents submitted.
  2. The office may publish the details of the proposed trademark in the list of well- known trademarks.
  3. Anyone who is against the inclusion of the proposed trademark in the list of well- known trademarks may write to the Registrar of Trademarks stating the reasons for their objection. Additionally, they can send supporting documents, if any.
  4. A copy of the objection may be sent to the applicant in order to receive their comments.
  5. The office notifies the objecting party and the applicant of their decision.
  6. The decision of the office, with regard to the issue of including the proposed trademark in the list of well-known trademarks, will be informed to the applicant.
  7. If the proposed trademark is determined as well-known, it will be notified in the Trade Marks Journal and will be added to the list of well-known trademarks provided on the official website.
  8. Even after registration, if it turns out that a mark was mistakenly or unintentionally declared as a well-known mark, the Registrar may remove it from the list.

The doctrine of well-known trademarks, which has its roots in the Paris Convention and the TRIPs, is of utmost importance, especially in the context of commerce. This is because, while both trademarks and well-known trademarks are protected by the Act, the level of legal protection given to trademarks pales in comparison to that given to well-known trademarks as the protection of trademarks. That is, while the protection of trademarks can be invoked only when the goods and/ or services are similar, and the protection of well-known trademarks can be invoked even if the goods and/ or services are dissimilar. Hence, it is strongly recommended for business to register their trademark as a well-known trademark in India.

By Karishma Sree, an aspiring Intellectual Property lawyer.