Well-Known Marks: Jettisoning the ‘Domestic Registration Requirement’ <i>Vis-à-Vis</i> Dissimilar Goods and Services

Abstract Well-known trademarks are a subset of trademarks that possess a high degree of reputation and recognition. While it was Art. 6bis Paris Convention that codified the doctrine of well-known marks for the first time, it was further expanded by Arts. 16(2) and 16(3) TRIPS. Thus, one significant expansion envisaged particularly by Art. 16(3) TRIPS was to extend the protection of well-known marks to dissimilar goods and services. However, Art. 16(3) woefully limited this protection to ‘registered’ well-known marks. Although scholars have often refused to treat this as a mere drafting error, it is hard to find any justification for its introduction. Indeed, the inclusion of a ‘registration requirement’ in Art. 16(3) irrespective of whether it contemplates anti-dilution or (extended) anti-confusion protection, seems to lack a normative basis. Additionally, this formality requirement makes a mockery of the law’s resilience and adaptability, as modern market dynamics do not warrant its retention. However, both Sri Lankan and Indian legislation governing well-known marks mimic this registration requirement to the detriment of the owners of well-known marks. This research suggests that both these legal regimes should jettison the ‘domestic registration’ requirement and embrace the approach adopted by the Joint Recommendation.