Article 16(1) and (2) of TRIPS Agreement contains obligations on member states to give effective protection to well known marks. Pursuant thereto India has provided statutory recognition to this in terms of section 2(1)(zg) which defines a well known trade mark and provisions of section 11(6) to 11(10) which provides detailed guidelines for determining that a trade mark is well known and the factors to be taken into account for such determination.
However, even before the Trade Marks Act, 1999, courts in India has through judicial pronouncement recognized and adequately protected the well known trade marks in India. To cite some examples: (a) the Registrar in Sunder Paramand vs. Caltex (1982 PTC) refused an application for the registration of the trade mark CALTEX in respect of watches in class 14 which was upheld by the High Court even though Caltex was well known only in respect of petroleum products; (b) DUNHILL, a well known mark in respect of cigarettes, and which was sought to be registered in respect of cycle parts was refused registration by the Registrar; (c) FIAT, a well known trade mark in respect of automobiles was protected by refusal of registration of identical mark in respect of hosiery. Also, an application to register the trade mark "FIAT" in respect of electric transformers, electric cut outs, etc. in class 9 was refused by the Registrar on the ground that the mark was a well known mark in respect of road motor vehicles.
Sub section (6) of section 11 lays down the factors which the Registrar shall take into account in determining whether a trade mark is well known trade mark or not. It mandates that the Registrar "shall" take into account – any fact which he considers relevant – including:
