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

As the name suggests, a mark which is well-known or popular is known as a well-known mark. The Indian Trademark legal system provides protection to Trademarks that are well-known and safeguards them from infringement and passing off. The Indian Intellectual Property Office (CGPTM) by filing for an application through the Trademark Registry recognizes these well-known Trademarks in India on the basis of their national, international and cross-border reputation. 

Before the Trademark Rules 2017 came into existence, well-known marks were determined by the Indian Courts and Tribunals and the Trademark Registry and as per these judicial pronouncements, a list of such well-known marks was made. Some of them include Yahoo, Havells, Ford, Amul, etc. 

After the introduction of Trademarks Rules 2017, it is now possible for Trademark holders to apply for well-known status by filing an application. Section 11(6) to Section 11(9) provides for the criteria that the Registrar shall look for and consider, 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.

Procedure for filing a Well-Known Trademark

• A request to declare a mark as a well-known Trademark is to be made in Form TM-M to the Trademarks Registry. 
• The Registrar must consider the provisions of sub-section (6) to (9) of section 11 which includes knowledge or recognition of the Trade Mark, the duration, extent and Geographical area of use, etc.
• As per Rule 124 of the Trademark Rules, 2017 any person may file an application online using Form TM-M, along with the relevant documents, including a statement supporting the application, contained in which are the specified reasons why the trademark should be considered as well-known as well as the prescribed fees.
• The Registrar of Trademarks then determines whether the Trademark qualifies as well known or not.
• In case the Trademark is determined as well-known, the same shall be published in the Trademark Journal and included in the list of well-known Trademarks maintained by the Registrar.

Cost of filing a Well-known Trademark application in India 

As per Rule 124 of the Trade Marks Rules, 2017 any person may file for an application of determination of a Trademark as well-known for which the official fee shall be Rs.1,00,000/-.

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