ADVERTISEMENT
SPONSORED
Introduction
The major shift to digital assets-based economy from physical assets has brought drastic changes and challenges regarding jurisdiction as it is no longer within territorial limits, we are on verge to reshape this as it deals with the entity who doesn’t have presence in the state but can acquire recognition. The territoriality of IPR gives rise to a basic issue of jurisdiction. There are two opposing theories on this issue, namely, The Registry Theory where the asset is located at the place of registration also known as territoriality principle and The Owner Theory where the asset is located where the owner lives but the principle of transborder reputation preserve trademark based on the reputation of their brand internationally which can be also referred as goodwill of a brand, regardless of their physical existence. Due to this economic change throughout the world by the way globalization many marks have established their good will and reputation even where they are not registered by applying principle of universality. One of the categories of marks which is known as well-known marks are generally those marks who have gone beyond or clear the threshold of the jurisdictional limits of a territory through communication or via any platform or any kind of travel, these marks are called as “Spill over marks” or can also be termed as transborder reputation. The main idea is essence of the brand over label or name as rightly said by Angelus Silesius “The rose is without why; it blooms because it blooms.” Meaning things have value simply by being what they are, to simplify things it barely matters if a street vendor have a different and better formula to make cola soda which is better than coca cola but coca cola will still be considered as the best options due to its presence at international stage and the reputation they carry and hold.
Concept and Evolution of the Doctrine of Transborder Reputation
Earlier the trademarks were strictly confined to territories and had proper jurisdiction to deal with, wherever the brand is registered, owned or utilized will rightly be the jurisdiction of it and would only be protected in that jurisdiction. If any trademark is widely established and popular enough, in that scenario to stop the misuse of its name and brand reputation where it does not have presence yet, the principle of universality comes to protect it from local players who can use these brands name and potentially earn through it.
Framework of International Conventions and Treaties
1. Paris Convention for the Protection of Industrial Property
The term well known marks is nowhere defined in this convention and hence it is open to interpretation to countries judiciary and trademark authorities but Article6 bis do provide safeguard to the trademarks which have reputation in international market regardless of their registration or physical presence in that country this is mainly done to protect their brand value and from local players who could potentially can capitalize on it by misrepresentation or by using same or similar brand name, value, methods, technique as used by original brand. Article 6bis also apply equally to an unregistered well-known mark and also to a well-known mark which is not used in a member country where its protection is sought. But this protection does not cover any and every similar marks, as it only applies in relation to goods but does not tend to include any sort of service, also if someone use mark of a company which is famous in ice creams to make towel or garments then the proprietor of the well-known mark of Ice Cream would not be able to rely on and take any benefit under this article. Hence the protection is only included
to identical, similar looking goods only.
2. Trade Related Aspects of Intellectual Property Rights
The TRIPS agreement more or less tried to enlarge the scope of Article 6bis of Paris convention. Article16 (2) of TRIPS enlarged the scope by eliminating the limitation of service. Hence even this agreement did not have any definition as to what actually well-known marks are but they provided certain guidelines like while determining well known marks, the relevant authorities (member state) should have necessary information about the business or area that trademarks is dealing with it and should not take any arbitrary decision based on irrational and insufficient information. This article also tried to give and provide even more protection to well-known marks in a way like fo If the name and/or logo of Cipla is well-known among doctors, pharmacists, and healthcare distributors, it could be considered a well-known mark in that field, even if laypersons do not recognize it as prominently. The article also suggests that if the company doesn’t have physical presence in the state, but they do publish newspaper, magazine and give advertisement about their product then it will be considered as evidence of
knowledge among public, using same example of Cipla in case if they do not have presence in any state but they do commercialize their mark by the way of advertising through newspaper and various other channel then they will be considered as well-known mark and will be protected under this article.
Earlier protection was limited to similar or identical marks used for goods but now Article 16 (3) extended this even further to goods or service which aren’t identical or similar at all subjects to the condition given in this article. But the necessity of registration in the country where protection is being sought does not take into consideration the aspect of transboundary fame that occurs in a globalized market economy, thereby leaving famous trademarks without registration at risk of exploitation. Moreover, the requirement for a “connection” and potential for damages restricts the scope of protection only to instances of confusion and poses a substantial evidential burden in establishing such cases, which are unable to tackle new theories such as dilution.
3. World Intellectual Property Organization’s (WIPO) Joint Recommendation (1999): Concerning Provisions on the Protection of Well-Known Marks,
This is one of the most influential nontreaty frameworks which sought to fill the gap and harmonize the two prior treaty and agreement which was Paris convention and TRIPS. The motive and intent to make this recommendation was mentioned in the preface of its document. Although even this treaty did not give any definite definition of well-known mark but they did provide essentials and conditions by which a mark can be determined as well known, it gave a uniform way to decide this unlike Paris convention and TRIPS where ambiguity was present. The condition or factors are (i) an exhaustive list to be considered by member state although Article 2(1) (c) of the Joint Recommendation clarifies that the factors mentioned in Article 2(1) (b) are not pre-requisites but mere guidelines for the member countries. Furthermore Article 2 (2) explains which public sector needs to be considered while deciding well known mark in given territory and article 2 (3) gives factors not be considered during this process. (ii)Ambit and scope protection which includes marks against conflicting marks, Conflicting Business identifiers and Conflicting Domain names17, all these things will be consider on the basis of bad faith intention that means one should come with clean hands and any other opposing interests. The threshold of mark and a well-known is discretion of state and will be decided by them as all well-known marks
are marks but not all known marks are well known. It can be observed from Article 2(3) (a)(i) that the need for registration of the well-known trademark has been done away with, which was mandatory as per Article 16(3) of the TRIPS Agreement in case the well-known trademark needed to be protected for dissimilar goods or services. It can thus be concluded that the Joint Recommendation surpasses the TRIPS Agreement in protecting well-known trademarks.
4. “Mega-Regional” Trade Agreements (CPTPP & USMCA)
CPTPP (Comprehensive and Progressive Agreement for Trans-Pacific Partnership) disallows the requirement by member states for a sign to be “registered nationally” as a condition precedent for recognizing the sign as a well-known mark. This is a major setback for territorial exclusivity. USMCA (United States Mexico Canada Agreement) In line with the CPTPP, this agreement requires well-known trademark protection irrespective of registration based on the WIPO criteria. RCEP (Regional Comprehensive Economic Partnership) Within the Asia-Pacific area, the RCEP increases the use of “bad faith” clauses, thereby making it simple for international trademarks to invalidate the registration of their trademarks that were registered “in bad faith.”
5. Regional or country based specific standard
Unlike other cases of trademark conflicts based on likelihood of confusion, EU standards shield brands having a “reputation in the Union.” It is important to note that such a rule is very effective as it gives the brand owner the power to stop third parties from using the mark, even when the product is not similar to the one under protection. The key concept behind this legal rule is preventing free riding, where a local firm tries to use the reputation of a famous mark to get a business advantage or to harm its unique quality or reputation. The US approach, in turn, allows for the creation of a federal cause of action for the “dilution” of marks that are already famous. The system requires the mark to be truly famous i.e.; it should be well-known to the consuming public of the country to be eligible for dilution protection without proving the existence of competition and consumer confusion. Through the use of Section 43(c), brand owners from around the world have access to two different routes through which they can stop local infringers from infringing their brand: (i) Dilution by Blurring (protects against the erosion of distinctiveness); and (ii) Dilution by Garnishment (prevents the tarnishing of goodwill). Decision 486 of the Andean Community, which applies to Bolivia, Colombia, Ecuador, and Peru,
represents the most complete “notorious mark” system available for trademark owners in South America. Articles 224-236 establish a particular regime for protecting “notorious signs” using the criterion of recognition in the “relevant segment of the public” as opposed to the entire population,
which is critical when dealing with business-to-business or luxury brands. Recent decisions by the courts in 2026 have confirmed that such a measure of protection also encompasses the prohibition against registering marks for non-commercial use if there is any danger of diluting the notoriety of the mark. For foreign owners, such a provision is vital in ensuring that their brands are protected from potential misuse in several national jurisdictions at once. Recently the Court of Justice of the Andean Community, which expanded protection to prevent third parties from using notorious marks even for non-commercial purposes if it causes dilution.
Statutory Framework Governing Transborder Reputation in India
Our Indian law for trademark was borrowed substantially from English law showing heavy influence because of various historical reasons. Even current trademark statute of India is very similar to UK trademark act. Until the introduction of current trademark act, international marks didn’t have any protection, the current act fulfilled these gaps incompliance with Paris convention, TRIPS and WIPO Joint Recommendation as India became member of WTO in 1995. The Trademarks Act, 1999 has codified ‘well-known trademark’ under § 2(zg) specifying pre-requisites for the same. The Act also provides for ‘absolute grounds’ and ‘relative grounds’ for refusal of a trademark under relevant sections. This act also gives non exhaustive list of factors similar as Article 2(1)(b) of WIPO’s Joint Recommendation. Section 11 (7) provide criteria for relevant public sector but is different from Article2 (2) (a) WIPO’s Joint Recommendation. The principle of “honest concurrent use” can be found in section 12 of the Act, which refers to (i) The honest adoption of the mark, (ii) Honest concurrent use of the same or similar mark with some other mark, the registration of which does not matter, and (iii) Conditions laid down by the Registrar. Contrary to this, the absolute opposite of the concept of “honest concurrent use” is provided under Section 34 of the Act where the concept of “prior use” is discussed, and no reliance is put on registration of the trademark. Whereas in the common law countries like that of United Kingdom, India, etc., passing off may apply not only to the proprietor of unregistered trademark but to even the proprietor of registered trademark except that the later also enjoys the additional protection in the form of ‘infringement action’.
Judicial Evolution of the Doctrine
The evolution of transborder reputation in India shows a tension between universality principle and territoriality principle. While initially the judiciary approached through liberal interpretation but slowly court understood reputation and goodwill are not confined by geographical boundaries, particularly in an era of digital economy. As seen in Whirlpool case where courts upheld the doctrine of trans-border reputation by granting protection to the mark “Whirlpool” despite the absence of substantial commercial presence in India, relying instead on widespread advertisements and limited exposure through diplomatic channels. Justice Lahoti stated “Inspite of non-registration of the trade mark in India, the
plaintiff was trading in Whirlpool products in several parts of the world and also sending the same to India though in a limited circle. Whirlpool associated with the plaintiff No. 1 was gaining reputation throughout the world. The reputation was traveling trans-border to India as well through commercial publicity made in magazines which are available in or brought in India. These magazines do have a
circulation in the higher and upper middle-income strata of Indian society. Washing machine is a household appliance used by the middle and upper clefs of the society. The plaintiff No. 1 can bank upon trans-border reputation of its product washing machine for the purpose of maintaining passing off action in India. “He also while putting heavy reliance on changing economic policy in India asked
for comprehensive and wider examination of this concept and held “Nobody shall be permitted to acquire for the benefit of oneself by using false means or misleading devices the benefit of reputation and goodwill earned by someone else. This is too good as a principle and also as law applicable to any country but what about its extension trans-border? India is moving towards free economy. The drastic changes in the economic policy of the country which are in offing is sure to entail entry-fresh and afresh of multi-nationals in the Indian market. The common law of passing off is sure to undergo a change. With the synchronization of the world, law cannot afford to remain conservative. Still the need of examining the concept of “trans-border reputation” by reference to its impact on the Indian economy and Indian industries cannot be ruled out.
Conclusion
Transborder reputation is no longer just for “super-brands” like Coca-Cola or Apple. In the interconnected economy of 2026, even mid-sized digital agencies and academic institutions can assert their rights across borders. However, as the Prius case warned, “territoriality” is not dead. Brands must actively cultivate and document their reputation in target markets long before the first shipping container arrives.
