Mint Explainer: From Taj to Nutella, why more brands are racing for the ‘well-known' trademark tag

Mint

07-08-2025

The Delhi high court recently declared Nutella, a globally loved chocolate spread, a 'well-known trademark" in India. This recognition is more than a nod to popularity. It's a legal safeguard to protect the brand's identity, reputation, and consumer trust from misuse and counterfeiting.
Nutella now joins the ranks of elite names such as Haldiram's, Peter England, Taj Hotels, and the likes of late Ratan Tata, who received this level of protection under Indian trademark law.
Mint explains why more brands are moving courts for the 'well-known' tag and how they use it.
The Nutella case and what prompted the court to step in
The Nutella verdict on 28 July followed a 2021 raid that uncovered nearly 1 million counterfeit Nutella jars in India. The packaging closely mimicked the original, posing health risks to consumers, especially children.
The court highlighted Nutella's global use since 1964, its Indian market presence since 2009, strong sales, and heavy advertising investment ( ₹16 crore in 2022–23). Justice Saurabh Banerjee awarded ₹30 lakh in damages and a permanent injunction, emphasising the need for high diligence in food-related IP cases.
What does the 'well-known" tag mean in trademark law?
Under trademark law, a 'well-known" mark is one that's recognised by the general public beyond its specific industry. For example, 'Taj' isn't just associated with hotels—it signifies luxury and heritage. The designation offers expansive protection, enabling brand owners to act swiftly against infringers, even in unrelated sectors.
This concept has international roots, anchored in treaties like the Paris Convention (Article 6bis) and TRIPS Agreement (Article 16), which obligate member countries to provide special protection to well-known marks. To support implementation, the World Intellectual Property Organization (WIPO) issued a joint recommendation that outlines best practices for countries to follow.
In response, many jurisdictions, including India, have created well-known mark registries that provide formal legal recognition and enforcement mechanisms in line with WIPO's guidance.
Why the rise in applications now?
Brands today aren't just reacting to infringement, they're getting proactive. Legal experts say the sharp rise in applications is driven by the digital commerce boom, rising cases of counterfeiting and piracy, and the judiciary's evolving understanding of brand equity.
'It's really about how brand value and IP have become central to business strategy, especially in an age where online infringement, counterfeiting, and cybersquatting are growing threats," said Alay Razvi, managing partner at Accord Juris. 'Companies are becoming far more proactive in securing this extra layer of legal protection."
A major turning point came with the 2017 amendment to the trademark rules, which introduced Rule 124. Prior to that, only courts or tribunals could grant 'well-known" status, typically during litigation. Rule 124 allows brand owners to independently apply to the registrar of trademarks by submitting evidence such as sales data, advertising expenditure, and media coverage—along with a prescribed fee. This removed the need for legal proceedings, making brand protection faster and more accessible.
'With increased digital trade, cross-border reputation, and the 2017 trademark rules streamlining the recognition process, well-known status has become a strategic tool, not just a legal accolade," said Ankit Sahni, partner at Ajay Sahni & Associates.
'Courts are also increasingly responsive to the idea that certain brands enjoy trans-border goodwill that merits expansive protection across unrelated categories," Sahni added.
India's rise in filings reflects this shift. In 2024, the country ranked third globally in trademark filings, with nearly 5.4 lakh new applications, closely trailing the US at just under 5.7 lakh.
How does it help brands?
Trademark experts say this status brings tangible commercial advantages. It allows brands to command higher royalties, stronger bargaining power, and faster legal remedies.
'In the commercial realm, the fortified legal status allows the brand owner to command premium pricing power, including higher royalty rates and franchise fees from partners. This gives the brand owner a stronger bargaining position during negotiations," said Swati Sharma, partner (head - Intellectual Property) at Cyril Amarchand Mangaldas.
The tag significantly boosts enforcement, especially online, said Sonal Madan, partner at Chadha & Chadha IP Law Firm. 'Online intermediaries tend to act faster when takedown requests come from well-known brands," she noted. 'This quicker response helps prevent misuse and strengthens brand protection on the internet."
Sahni added that the well-known status not only strengthens dilution claims and speeds up injunctions, but also acts as a psychological deterrent. 'It creates a chilling effect, making infringers think twice before taking on a legally fortified brand."
The role of dynamic injunctions
Well-known trademarks are increasingly being used alongside dynamic injunctions, a powerful judicial tool that allows brand owners to preemptively block mirror websites and repeat infringers without returning to court repeatedly.
The Delhi high court has led this evolution. For example, JioStar was granted a dynamic injunction to prevent illegal streaming during the India Tour of England 2025. Fashion designer Rahul Mishra received similar protection for his brand. Other recipients include Gameskraft, Baazi Group, Culver Max (Sony), and Zee Entertainment, with courts ordering domain blocks and proactive safeguards.
'This synergy makes it easier and quicker to secure injunctions for digital enforcement, including domain name blocking," said Swati Sharma of Cyril Amarchand Mangaldas. 'The legal framework is also bolstered by a physical barrier—customs enforcement. Brands that record their marks with Indian Customs empower port authorities to seize counterfeit goods before they enter the market."
Is there a risk of overuse?
Yes. As more brands seek this elite status, experts warn of potential misuse. Some companies may use the 'well-known" label to pressure smaller businesses or stifle fair competition, even in unrelated product categories.
'The registry and courts are being cautious," said Madan of Chadha & Chadha IP Law Firm. 'The aim is to protect genuine goodwill, not weaponize IP to shut down legitimate players."
While the tool is powerful, checks are in place. As filings rise, so does the scrutiny, ensuring only truly deserving brands receive this legal recognition.