Safeguarding Well-Known Trademarks: Protection Against Identical or Similar Trademarks in India

This article explores the legal framework in India that protects well-known trademarks from being registered as identical or similar trademarks. It discusses the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, outlining the criteria for determining well-known status. The article also covers statutory provisions, opposition proceedings, judicial precedents, international treaties, Trade Marks Registry guidelines, and the Trademark Rules of 2017. Additionally, it examines the remedies available to trademark owners in case of misuse and infringement under Section 27(2) of the Trademark Act, 1999. The conclusion emphasizes India's comprehensive and robust legal framework, aligning with global standards to foster business growth and intellectual property protection.

Safeguarding Well-Known Trademarks: Protection Against Identical or Similar Trademarks in India


Well-known trademarks are an essential aspect of the business world as they represent a brand's credibility, reliability, and uniqueness. In India, as well as many other countries, protecting well-known trademarks is crucial to prevent unauthorized use and dilution of the brand's distinct identity. This article delves into the legal framework in India that safeguards well-known trademarks from being registered as identical or similar trademarks. It will provide an in-depth understanding of how the Indian trademark law system functions and how it ensures the protection of well-known trademarks.

Legal Framework:

The protection of well-known trademarks in India is established by the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. According to Section 2(zg) of the Act, a trademark can be considered well-known if it has gained significant recognition among consumers who use the goods or services it represents. The Act also takes into account various factors, such as the reputation of the trademark, the goodwill it has generated, and the level of recognition it has achieved. These provisions ensure that well-known trademarks in India are adequately safeguarded against infringement and misuse.


Protection Against Identical or Similar Trademarks:

1.      Statutory Provisions: According to Section 11(2) of the Trademark Act, trademarks that are identical to an existing trademark, or that bear a resemblance to trademarks owned by other proprietors, cannot be registered in order to safeguard the interests of the owners of the original trademarks. To distinguish a trademark as well-known, Section 11(6) outlines certain criteria such as its knowledge and recognition, duration, extent of use, and successful enforcement. The registrar must protect well-known trademarks under Section 11(10) by taking into account the ill intent and motivation of the opposition party.


  1. Opposition Proceedings: Trademark owners who have established a prominent reputation for their brand can take measures to prevent the registration of similar trademarks during the trademark registration process. This can be achieved by filing oppositions against conflicting trademarks. Through this process, the owners can provide evidence to support the well-known status of their mark and present arguments against the registrability of the similar mark, thus protecting the distinctiveness of their brand.


  1. Judicial Precedents: India's legal system has upheld the importance of safeguarding renowned trademarks in a consistent manner. Over the years, Indian courts have ruled on numerous cases related to trademark infringement, taking into account several factors such as the mark's strength, its reputation, and the probability of confusion among consumers. Through these judgments, the courts have established a robust framework for protecting well-known trademarks, ensuring that they are not misused or exploited by unauthorized parties.


  1. International Treaties: India, as a signatory to several international treaties such as the Paris Convention and TRIPS Agreement, places significant importance on safeguarding well-known trademarks. The legal framework in India is designed to be in alignment with these international agreements, providing a robust and comprehensive framework for the protection of well-known trademarks. Through this legal framework, India offers additional layers of protection and ensures that well-known trademarks are safeguarded against potential infringement and unauthorized usage.
  2. Trade Marks Registry Guidelines: The Trade Marks Registry in India plays a crucial role in safeguarding the interests of trademark owners. To ensure that well-known trademarks are given the protection they deserve, the Registry has issued guidelines to examiners. These guidelines are designed to help examiners evaluate the uniqueness and reputation of a trademark during the registration process. By doing so, the Registry aims to prevent unauthorized use of a trademark and ensure that it enjoys the legal protection it deserves.

6.      The Trademark Rules 2017. (Rule 124): The Trademark Rules of 2017 are the most recent set of regulations in India for registering trademarks. These rules allow trademark owners to apply to the Trademark Registry to have their trademark recognized as "well-known." The rules also include criteria for determining whether a trademark is indeed well-known, which is done through a separate application process. To request such recognition, one must fill out an application in the ™-M form and pay a fee of Rs.1,00,000/-. Rule 124 outlines the process for granting a trademark the status of "well-known" upon request through an application to the registrar. Prior to the existence of these rules, obtaining the "well-known" status for a trademark often required adversarial court proceedings or tribunal hearings.


Remedies available for the trademark owner in case of misuse of well-known trademark

Section 27(2) of the Trademark Act restricts the use of similar or identical well-known trademarks in similar or distinct goods and services. To remedy trademark infringement, whether it is an ordinary or well-known trademark, it needs to be registered in India. If a well-known trademark is registered as an ordinary trademark and is used for identical goods, then the provisions of Section 29 subsection 1, 2, and 5 will apply in a similar way to the well-known registered trademark as they apply to the ordinary registered trademark. The difference in action after the infringement of a normally registered trademark and well-known trademark is provided under Section 29(4) of the Trademark Act, 1999. This section states that a registered trademark having a reputation in India is said to have infringed if any person uses a trademark similar to a registered trademark, or similar trademark used for different goods or services, or there is a malicious intention to make a profit using the repute of the registered trademark. This provision stands in line with India's obligation to TRIPS.




India's legal framework for protecting well-known trademarks is comprehensive and robust. The Trade Marks Act, 1999, and the Trade Marks Rules, 2017, provide clear provisions to safeguard trademark owners' interests. To determine the well-known status, factors like recognition, reputation, goodwill, and consumer awareness are considered. Trademark owners can seek remedies under Section 27(2) of the Trademark Act, 1999, in case of misuse or infringement. This restricts the use of similar or identical well-known trademarks in similar or distinct goods and services. India's legal framework aligns with global standards and reflects the country's commitment to creating a conducive environment for businesses to thrive by safeguarding their intellectual property. The Trade Marks Registry continuously evolves laws and regulations, ensuring well-known trademarks receive the protection they deserve. This innovation, brand development, and economic growth in the Indian business landscape.

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