Rule 124 lets a brand owner apply to have their mark declared well-known — but the rule itself was vague. So the Registry issued guidelines fleshing out the application, documents and procedure. Here’s how it works, and the debates it stirred.
Background: the old way
The Trade Marks Registry maintains a list of well-known marks on its website (e.g. HONDA, HORLICKS) — first published in January 2011. Before that list, you had to scour Supreme Court, High Court, IPAB and Registry decisions. Even after, the list only grew when a mark was declared well-known during opposition, rectification or infringement — meaning owners had to wait for such a proceeding.
The 2015 draft amendment proposed empowering the Registrar to review a direct application for well-known status, and the Trade Marks Rules, 2017 delivered it via Rule 124.
The gap Rule 124 left
Rule 124 simply says you can apply for well-known status on Form TM-M — but provided no procedure, criteria or guidelines. The Controller’s public notice (22 May 2017) filled that gap.
What the guidelines require
Application: on Form TM-M with the prescribed fee (INR 1,00,000), filed online via ipindia.nic.in. Evidence documents in PDF (200×100 dpi, A4), under 10 MB.
Documents to attach:
- a statement of case describing the applicant’s rights and the well-known claim;
- supporting evidence — use, applications/registrations, annual sales turnover, actual/potential customers, publicity reach, advertising and expenses, and evidence of recognition in India and abroad; and
- evidence of successful enforcement — court/Registrar recognitions, copies of judgments.
Procedure: on receipt, the Office considers the claim and may publish the proposed mark; objectors may file written objections with reasons and evidence; applicants are notified within the stipulated time; and if accepted, the mark is notified in the Trade Marks Journal and on the website.
The debates
The guidelines drew critical commentary:
- Constitutionality of Rule 124. The Act doesn’t expressly delegate power to create a procedure to declare well-known marks, and Rule 124 arguably cuts across Section 11. (A counter: Section 157(xli) lets the CG make rules on “any other matter… required or… prescribed.”)
- Arbitrary power. A biased/corrupt Registry decision could let an infringing mark onto the list.
- No explicit hearing on objections in the rule.
- The Section 11(9) tension. The guidelines say evidence “may include applications/registrations if any” — yet the form requires an existing application number (registered or pending). So you can’t file a fresh application as a well-known mark; an existing one must be included — arguably against Section 11(9), which says a mark needn’t be registered/pending/used in India to be well-known.
Even so, it’s a welcome move — one to watch as it plays out.
The takeaways
- You can apply directly for well-known status — Form TM-M, ₹1 lakh, online.
- Assemble broad evidence — use, sales, publicity, recognition (India and abroad) and enforcement.
- The Registry may publish and invite objections before deciding.
- A Section 11(9) tension remains — the form’s need for an existing application number sits awkwardly with the statute.
Frequently asked questions
How do I apply for well-known trademark status under Rule 124? File Form TM-M online with the ₹1,00,000 fee, attaching a statement of case, supporting evidence (use, sales, publicity, recognition) and evidence of successful enforcement.
What documents does the Registry require? A statement of case, evidence of use/registration/sales/publicity/recognition in India and abroad, and evidence of successful enforcement such as court judgments.
Can the public object to a well-known application? Yes — after the Office may publish the proposed mark, objectors can file written objections with reasons and evidence.
What’s the Section 11(9) concern with Rule 124? Although Section 11(9) says a mark needn’t be registered or used in India to be well-known, the Form TM-M requires an existing application number, which sits awkwardly with that.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India