Well-known trade marks and trans-border reputation - Law of Trademarks

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1. International sources
2. The definition (section 2(1)(zg))
3. Criteria and procedure (section 11(6) to (10))
4. The Indian cases
5. Protection given to a well-known mark
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

The core tension. Trade mark rights are territorial, but reputation is not. Well-known mark protection lets a famous mark be protected in a country where it is not registered, or even used, and against goods quite unlike its own. The LL.M. answer should explain how far Indian law has gone, and how Toyota v. Prius (2017) drew it back.

1. International sources

Paris Convention, Article 6bis (introduced at the Hague revision, 1925): members must refuse or cancel registration and prohibit use of a mark that is a reproduction, imitation or translation liable to create confusion with a mark considered by the competent authority of the country to be well known there as being already the mark of a person entitled to the Convention, for identical or similar goods. At least five years must be allowed for seeking cancellation, and no time limit applies to marks registered or used in bad faith.
TRIPS, Article 16(2): extends Article 6bis to services, and says that in determining whether a mark is well known, members shall take account of knowledge of the mark in the relevant sector of the public, including knowledge obtained as a result of promotion. Article 16(3): extends protection to dissimilar goods or services where use would indicate a connection with the owner of a registered well-known mark and its interests are likely to be damaged.
WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, 1999: a non-binding soft law instrument listing factors, which India substantially copied into section 11(6) to (9).

2. The definition (section 2(1)(zg))

A well-known trade mark, in relation to any goods or services, is 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 the mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade between those goods or services and the person using the mark in relation to the first-mentioned goods or services.

The test is knowledge in the relevant segment, not the public at large, and the consequence is protection across goods.

3. Criteria and procedure (section 11(6) to (10))

Section 11(6): in determining whether a mark is well known, the Registrar shall take into account any fact he considers relevant, including:

the knowledge or recognition of the mark in the relevant section of the public, including knowledge in India obtained as a result of promotion;
the duration, extent and geographical area of any use;
the duration, extent and geographical area of any promotion, including advertising, publicity and presentation at fairs or exhibitions;
the duration and geographical area of any registration or application, to the extent they reflect use or recognition;
the record of successful enforcement of rights, in particular recognition as well known by any court or Registrar.

Section 11(7): the relevant section of the public includes actual or potential consumers, persons in the channels of distribution, and business circles dealing with the goods.

Section 11(8): a mark determined to be well known in at least one relevant section of the public in India by a court or Registrar shall be considered well known by the Registrar.

Section 11(9): the Registrar shall not require as a condition that the mark has been used in India, is registered or applied for in India, is well known or registered in any jurisdiction other than India, or is well known to the public at large in India.

Section 11(10): the Registrar shall protect well-known marks against identical or similar marks and shall take into account bad faith on the part of the applicant or opponent.

Rule 124 of the Trade Marks Rules, 2017 allows an owner to request the Registrar to determine its mark as well known, with a statement of case and supporting evidence. Marks so determined are published, and the Registry maintains a list.

4. The Indian cases

Daimler Benz v. Hybo Hindustan (Delhi High Court, 1994)

The defendant used “Benz” with a three-pointed star-like device for undergarments. The court restrained it, observing that a mark as famous as Mercedes Benz should not be used for unrelated goods, and that such use would harm the reputation of the mark. This was an early Indian recognition of dilution-type protection before the 1999 Act.

N.R. Dongre v. Whirlpool (1996)

In N.R. Dongre v. Whirlpool Corporation, 1996 INSC 971, (1996) 5 SCC 714, Whirlpool’s Indian registration had lapsed, and the defendants had registered “Whirlpool” for washing machines. The Supreme Court upheld an injunction in passing off, finding that Whirlpool had a trans-border reputation in India through advertisements in international magazines circulating in India and limited sales to embassies. Knowledge of the mark among the relevant Indian public was enough, even though Whirlpool goods were not then widely sold in India.

Milmet Oftho v. Allergan (2004)

In Milment Oftho Industries v. Allergan Inc., 2004 INSC 374, the dispute was over “Ocuflox” eye drops. The Court upheld protection for Allergan, which had used the mark first internationally, and observed that in medicinal products, where confusion can harm health, the court should look at who was first in the world market, while cautioning that a multinational which has not entered India for years should not be allowed to block an Indian company that has built the market.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries (2017)

In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries, 2017 INSC 1230, the defendants had used and registered “Prius” for automobile spare parts since 2001. Toyota launched its Prius car in Japan in 1997 and in India only in 2009. The Supreme Court held against Toyota. It adopted the territoriality doctrine, citing Starbucks (HK) v. British Sky Broadcasting (UK Supreme Court, 2015): a claimant in passing off must show goodwill or reputation in India, among Indian consumers, at the date the defendant entered the market. Global reputation does not suffice unless it spilled over into India. On the evidence, Toyota had not shown that “Prius” was known in India in 2001.

Whirlpool or Toyota? The cases are consistent in principle: both ask whether the mark was known in India. They differ in evidence and in tone. Whirlpool was generous to foreign owners in a closed economy where advertising crossed borders before products did. Toyota demands proof of Indian reputation at the relevant date and is more protective of Indian businesses that adopted honestly. With the internet, spillover reputation is easier to prove, but Toyota means that online presence must be shown to have reached Indian consumers, not assumed.

Tata Sons v. Manoj Dodia (Delhi High Court, 2011)

The court declared “Tata” a well-known mark, applying the section 11(6) factors, and restrained its use by an unrelated trader. Courts have since declared many marks well known in infringement suits, and there has been criticism that such declarations are made in ex parte or uncontested proceedings without full scrutiny of the evidence.

5. Protection given to a well-known mark

Refusal of later identical or similar marks for any goods (section 11(2) and (10)).
Infringement by use on dissimilar goods where the mark has a reputation in India and the use takes unfair advantage of, or is detrimental to, its distinctive character or repute (section 29(4)).
Passing off, through trans-border reputation, without registration.
Protection against use as a trade name or domain name.

How this is examined

The 2025 short note on well-known marks should give the definition, the section 11(6) factors, section 11(9), Article 6bis and TRIPS Article 16, and two cases (Whirlpool and Toyota). An essay on trans-border reputation should take the cases in sequence and end with the evaluation above.