Abandonment of Well-Known Trademark

Viesakan Venkatachalapathy Sivaraj
Tamil Nadu National Law University, India.

Volume III – Issue I, 2021

Well-known trademarks are a subset of the trademark regime that have been given a higher degree of protection due to their reputation gained among the consumers and the business circle. The Indian trademark Act lays down criteria for determining a well-known trademark. This part has been dealt with extensively by the legislature and the judiciary. Whereas issues like the duration of this special status granted and cases, where the owner stops using the well-known marks, are still unanswered as the law is silent and there are few judicial pronouncements on this matter.

The paper examines judicial decisions by the Indian, U.S, U.K and Singapore courts to determine the duration of the well-known mark. Next, the paper focuses on the non-use of the mark. A well-known trademark is said to be abandoned if it is not used in goods or services for over a period of time. This ‘period of time’ has not been clearly been defined in law or statute. It has been discussed in few judgments in different jurisdictions. Test accepted by the courts, when the question of abandonment is being raised is that the owner should prove genuine use of the mark or else it is deemed abandoned. There still needs a lot more clarity on this topic by way judiciary or the legislature but for now it is at the development stage and the importance is being recognised slowly. The paper shows what could be the way forward on this matter.


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