As per Section 2(zg) of the Act, a well-known trademark is defined as “in relation to any goods or services, means an 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.”

As the name suggests, a mark which is well-known/popular are well-known marks.

As already mentioned above, well-known trademarks are protected specifically under the Trademarks Act and Section 11(2) specifically mentions that even where the subsequent deceptively similar mark is for different goods/services, if the prior mark is well-known, then the subsequent mark shall not be registered.

Till the Trademark Rules 2017 was introduced, well-known marks were determined by the Indian Courts and Tribunals and the Trademark registry, as per the judicial pronouncements, had made a list of such well-known marks. Some of them include Benz, Bisleri,Whirlpool.

But after the introduction of Trademarks Rules 2017, it is possible for trademark holders to apply for well-known status. Broadly put, Section 11(6) to Section 11(9) breaks down the criteria that the Registrar shall look for, among other things, to determine a well-known trademark. Factors like knowledge/recognition among the relevant section of the public in respect of the said mark, geographical extent and length of time for which the mark has been promoted and used etc shall be looked into, by the Registrar to determine if a mark is well-known.

A request to declare a mark as well-known trademark has to be made in TM-M. Section 11(9) specifically lays down that it is not mandatory for a mark to be registered or application pending in India or have usage in India to be declared well-known trademark. However upon perusal of the said Form, it would be apparent that to make the said application, it is necessary to provide an Indian application number without which it appears that such an application cannot be made.

The fee for making an application to obtain well-known status for one mark is a gargantuan amount of Rs 100,000.

Also Read: How to get a “well known” trademark status for your mark in India