Safeguarding Well-known Trademarks Across Borders: An International Perspective

When a brand becomes globally recognized – think of the distinctive red sole of a Louboutin shoe or the three-stripe motif of Adidas – its value transcends borders. Yet trademark law, at its core, is territorial. A registration in India does not automatically protect you in France, and vice versa. This creates a real vulnerability: a locally unknown competitor in another country can adopt your mark, build a business on your reputation, and face no legal consequences under domestic law alone. Addressing this gap is precisely what international conventions on well-known trademarks set out to do. Two instruments sit at the heart of this framework – the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The territoriality problem and why it matters 🔗

Trademark law follows the principle of territoriality – rights exist only within the jurisdiction where the mark is registered or used. This works well enough for businesses operating within a single country. But as global commerce expanded, brands found their reputations spreading far beyond their registered territories, often without any local use or registration at all. A consumer in Mumbai who has never visited a McDonald’s outlet may still instantly recognise the golden arches. That kind of cross-border recognition is precisely what makes well-known marks valuable – and precisely what makes them a target for imitation.

Without a specific international mechanism, a third party in a member country could freely register a globally famous mark for local goods, trade on its goodwill, and be entirely within the law. The international community recognised this as a problem warranting a coordinated solution, and the first step came with the Paris Convention.

The Paris Convention and Article 6bis: the original framework 🔗

The Paris Convention, first signed in 1883 and subsequently revised multiple times, is one of the oldest and most foundational international intellectual property treaties. It introduced key principles such as national treatment (foreign applicants must receive the same treatment as domestic ones) and the right of priority (a filing in one member country can claim the earlier date in another). But its most significant contribution to the protection of well-known marks is Article 6bis.

Article 6bis of the 1967 Paris Convention requires member countries to afford certain protections to well-known marks, regardless of whether they are registered in that country. Specifically, member states must provide a means to refuse or cancel the registration, and prohibit the use, of a mark that is a reproduction, imitation, or translation of a well-known mark when such use is likely to create confusion. Importantly, this protection is triggered even if the mark owner has never registered or commercially used the mark within the concerned country – recognition of the mark’s reputation is sufficient.

The Convention also establishes a minimum time limit: a period of at least five years must be available for requesting the cancellation of an infringing registration. For marks registered or used in bad faith, however, no time limit applies at all – bad faith registrations remain vulnerable to cancellation indefinitely.

Limitations of Article 6bis 🔗

While Article 6bis was progressive for its time, it left significant gaps. It applied only to goods, not to services. It did not define what “well-known” actually meant, leaving that determination entirely to the discretion of each member state. There was also no guidance on how to assess whether a mark had acquired the requisite recognition, and the protection was generally confined to identical or similar goods – not to entirely different product categories where a famous mark might still be diluted. These shortcomings made it necessary to build a more comprehensive international standard.

TRIPS Agreement: expanding and strengthening protection 🔗

When the TRIPS Agreement came into force in 1995, it incorporated Article 6bis of the Paris Convention by reference and significantly expanded upon it. TRIPS is binding on all WTO member states and sets minimum standards of intellectual property protection that each member must implement domestically. For well-known trademarks, the critical provisions are Articles 16(2) and 16(3).

Article 16(2): extending protection to services 🔗

Article 16(2) of the TRIPS Agreement extended the application of Article 6bis of the Paris Convention to services, correcting the most glaring omission of the original framework. A globally recognised service mark – the branding of a hotel chain, an airline, or a financial institution – now received the same protection as a mark used on goods. Article 16(2) also introduced an important evidentiary clarification: in determining whether a mark is well-known, member states must take into account the knowledge of the trademark in the relevant sector of the public. This is significant – a mark does not need to be household-famous across an entire country. Recognition within the relevant consuming public or trade sector is enough.

Article 16(3): cross-category protection 🔗

Article 16(3) addressed another critical gap left by the Paris Convention. It extended the protections of Article 6bis to situations where a well-known registered mark is used on goods or services that are not identical or similar to those for which the mark is registered, provided two conditions are met: the use of the conflicting mark indicates a connection with the well-known mark’s owner, and that owner is likely to suffer damage as a result. This is essentially codifying the concept of dilution at the international level – protecting the distinctiveness and reputation of a famous mark even when there is no direct competition between the goods or services involved.

In practical terms, this means that a company cannot register “Rolex” for stationery or “Google” for clothing and expect TRIPS obligations to permit it. The reputational damage to the original mark owner is a recognised harm, regardless of the product category.

The WIPO Joint Recommendation of 1999: filling the interpretive gap 🔗

Even with TRIPS in place, one fundamental problem remained: neither the Paris Convention nor TRIPS defined precisely how to determine whether a mark qualifies as “well-known.” Each member state retained broad discretion, creating inconsistency. To address this, the Assembly of the Paris Union and the General Assembly of WIPO adopted the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks in September 1999.

The Joint Recommendation does not create binding international law – it is recommendatory in nature. However, it provides a coherent and widely referenced set of guidelines that member states are encouraged to incorporate into their national frameworks. Its primary contribution is a non-exhaustive list of criteria that competent authorities must consider when determining whether a mark is well-known, as laid down in Article 2 of the Recommendation.

Criteria for determining a well-known mark under the Joint Recommendation 🔗

According to Article 2 of the Joint Recommendations, the competent authority must take into account any circumstances from which it may be inferred that the mark is well known. These include: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent, and geographical area of any use of the mark; the duration, extent, and geographical area of any promotion of the mark, including advertising and presentation at fairs or exhibitions; the duration and geographical area of any registration or application for registration; the record of successful enforcement of rights in the mark, particularly the extent to which the mark was recognised as well-known by competent authorities; and the value associated with the mark.

Crucially, the Joint Recommendation also clarifies that actual use of a mark within a territory is not required as a condition for it to be considered well-known there. Promotion through advertising, spillover from neighbouring markets, and cross-border media exposure can all contribute to a mark’s well-known status, even without a commercial presence in that country. This is a significant departure from the general rule in trademark law that use is prerequisite to rights.

The Recommendation also extended protection against conflicting business identifiers and domain names – recognising that the internet had created an entirely new dimension of potential misuse for famous marks. A domain name incorporating a well-known mark, registered in bad faith, is treated as a conflicting use under this framework.

How India implements international standards for well-known trademarks 🔗

India, as a member of both the Paris Convention and the WTO, incorporates these international obligations through the Trade Marks Act, 1999. The statute defines a “well-known trade mark” under Section 2(1)(zg) as a mark that has become so known to a substantial segment of the public that its use in relation to other goods or services would likely indicate a connection with the owner of the mark. The protection under this definition extends beyond the registered category of goods or services – mirroring the cross-category protection introduced by TRIPS Article 16(3).

Section 11 of the Act operationalises this protection as a relative ground for refusal of registration. Under Section 11(2), a later mark will be refused registration if it is identical or similar to a well-known mark in India and its use – even for entirely different goods or services – would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well-known mark.

Factors the Registrar considers 🔗

Section 11(6) of the Trade Marks Act sets out the factors the Registrar must consider when determining whether a trademark qualifies as well-known. These closely track the WIPO Joint Recommendation criteria and include: the knowledge or recognition of the mark in the relevant section of the public, including recognition obtained through promotion; the duration, extent, and geographical area of use and promotion; the history of registration or applications for registration in India and abroad; and the record of enforcement in legal proceedings where the mark has been recognised as well-known by courts or the Registrar.

Importantly, Section 11(8) of the Act clarifies that the Registrar is not required to consider whether the mark has been used or registered in India, whether the mark is registered or applied for in other jurisdictions, or whether the mark is known to the public at large in India as a whole. This means international brands can be recognised as well-known in India even without prior use or registration within the country, provided evidence of their cross-border reputation is established. A once-determined well-known status is also durable: if a court or the Registrar has already declared a mark well-known, that recognition carries forward automatically for the purposes of future registration proceedings.

The territoriality tension: the Prius case 🔗

India’s courts have grappled with the tension between cross-border reputation and the territorial basis of trademark rights. In the well-known Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018), the Supreme Court of India held that even if a mark enjoys global fame, its owner must demonstrate that the mark’s goodwill and reputation were established within the domestic Indian market at the relevant time. Global reputation alone is insufficient – the knowledge of the mark must be prominent, substantial and widespread among the relevant section of the Indian public. This decision reflects the continued relevance of the territorial principle even within the framework of protection for well-known marks.

The broader significance: why international protection matters 🔗

The evolution from Article 6bis of the Paris Convention to the comprehensive provisions of TRIPS and the WIPO Joint Recommendation reflects a steady international consensus that well-known marks deserve a category of protection that goes beyond ordinary registration-based rights. The rationale is straightforward: the goodwill embedded in a famous brand is a genuine economic asset. Allowing third parties to free-ride on that goodwill – by registering the mark in a country where the owner has no presence – represents both consumer deception and unjust enrichment at the expense of the mark’s owner.

The challenge going forward lies in harmonised enforcement. While the international standards are increasingly clear, domestic implementation remains uneven. Countries retain discretion in how they interpret “well-known,” how they weigh the criteria, and what evidentiary standards they apply. For brand owners operating across multiple jurisdictions, understanding this patchwork – and strategically building a record of use, registration, and enforcement – remains as important as the international framework itself.

What do you think? If a brand is globally recognised through internet advertising but has never been sold or registered in a particular country, should that country’s courts be obligated to treat it as a well-known mark? And given that both the Paris Convention and TRIPS leave considerable discretion to member states, do you think the current international framework does enough to prevent bad-faith appropriation of famous marks in developing economies?

References

1. https://www.wipo.int/treaties/en/ip/paris/
2. https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
3. https://www.uspto.gov/ip-policy/trademark-policy/well-known-marks
4. https://www.wipo.int/pressroom/en/prdocs/1999/wipo_upd_1999_63.html
5. https://www.lexology.com/library/detail.aspx?g=d65fc538-e10d-4a72-beba-a4b322d2891c
6. https://indiankanoon.org/doc/1558275/
7. https://ssrana.in/ip-laws/trademarks-in-india/well-known-trademarks-india/