Features

The Steps to Better Online Protection for Famous and Well-Known Marks

Published: February 25, 2026

Chris Kelly Wiley Rein Washington, D.C., USA Famous and Well-Known Marks Committee

Vlotina Liakatou ITV PLC London, United Kingdom Famous and Well-Known Marks Committee

Alfonso Saban Herrero & Asociados Madrid, Spain Famous and Well-Known Marks Committee

In a world where social media dominates, the robust protection of valuable and established brands has become increasingly vital.

Social media (and e-commerce) platforms (SMPs) have their own rules, policies, and takedown procedures for the protection of brands against online infringement. Some in the trademark community believe that SMPs do not go far enough to address the protection of famous and well-known marks and urge the adoption of policies and procedures tailored specifically to this category of marks. Others contend that current policies are satisfactory and that SMPs should not attempt to assess a mark’s fame or well-known status, and they raise a variety of potential issues to support this position.

Many in the trademark community believe that the complaint policies and procedures that SMPs rely on provide adequate recourse to trademark owners, particularly when addressing a takedown request involving the same or similar marks used for the same goods or services. In most instances of this nature, a copy of a duly issued trademark registration is sufficient to remove infringing content.

In the case of famous and well-known marks, however, this “same mark for the same goods or services” analysis frequently is of less value because the inquiry often involves the same or similar marks applied to dissimilar goods or services. By way of example, certain third-party uses may seek to benefit from the commercial and consumer recognition of well-known brands, such as through look-alike products or content designed to evoke brand association, without reproducing the mark itself. In the social media context, such uses may be further amplified by platform algorithms, raising concerns related to brand dilution while remaining difficult to address through traditional infringement-based takedown mechanisms. Some believe that SMPs must broaden what is seen as a narrow, overly restrictive approach to takedown assessments in favor of policies and procedures that protect famous and well-known marks.

One of the biggest challenges to implementing a system providing enhanced protection of famous and well-known marks is determining which marks qualify for this distinct category. Many believe that SMPs, unlike national and regional trademark offices and courts, lack the authority to make such independent determinations and, moreover, do not have qualified personnel to do so. Rather than expecting SMPs to perform these evaluations independently, they believe that, if anything, it would be more effective for SMPs to rely on existing findings of fame or well-known status that either trademark offices have issued or that have been established by judicial or administrative resolutions that set precedents regarding a brand’s fame.

Only 12 countries have established registries specifically recognizing the famous or well-known status of a mark. These include Brazil, Ecuador, India, Japan, Mexico, and Türkiye. Each jurisdiction has specific requirements and formalities for obtaining this designation. For instance, in Mexico, it is necessary to submit evidence demonstrating public recognition of the trademark, such as surveys or market studies. In Brazil, granting famous or well-known status is effective for a period of 10 years and is nonrenewable, requiring a new application for continued recognition. Trademark owners in India can also obtain recognition as well-known marks either through the formal registration process or by securing judicial acknowledgment of their trademark status in proceedings such as oppositions and cancellations. This latter practice is also common in countries like Argentina and Uruguay, where there is no formal option to apply for a declaration of fame.

Only 12 countries have established registries specifically recognizing the famous or well-known status of a mark.

Those who favor SMPs enhancing their takedown procedures to recognize the famous and well-known status of marks believe that this will address a significant frustration among owners of famous marks—namely, the need to resort to litigation to remove infringing marks or content from e-commerce sites because of takedown policies focusing narrowly on same mark/same goods or services scenarios.

Many believe, moreover, that revised policies would allow trademark owners to avoid the need to navigate complex, potentially burdensome, and perhaps inconsistent proof requirements if SMPs were to settle on a uniform approach to this issue, such as relying on a mark’s judicially recognized fame or well-known status. In addition, a takedown policy allowing for recognition of a mark’s fame or well-known status as determined by a competent authority would alleviate concerns voiced by some that consideration of a mark’s status would place excessive administrative burdens on SMPs.

Opponents of SMPs relying on prior judicial or similar findings believe this potentially raises jurisdictional issues if, for example, a finding were reached by a court in a jurisdiction other than where either an SMP or alleged infringer is located. Moreover, some in the trademark community question whether recognition of a mark’s fame by SMPs would be determined on a case-by-case basis or whether, after an initial finding, SMPs should recognize a mark’s fame or well-known status for a set period. The latter approach would obviate the need for trademark owners to make an evidentiary showing as part of every takedown request.

Changes to existing takedown procedures and policies to assess the fame and well-known status of marks may require SMPs to increase investment in personnel and other resources, given the expected increase in use of these procedures by trademark owners. And, if SMPs were to base assessments of a mark’s status on an evidentiary record—as opposed to simply a prior judicial or similar finding—they may need to increase personnel substantially to review submitted documentation, including the need for highly trained personnel in intellectual property matters. Such changes likely would increase costs for SMPs to administer their takedown programs—perhaps significantly.

Some platforms give brand owners the opportunity to claim that their mark is famous or well-known at some point during a takedown request process by providing additional information about their concerns in an open-text window, an email, or by uploading relevant documents. However, the lack of specific guidelines addressing fame means that all marks are treated equally, depriving famous and well-known marks of the scope of protection they should enjoy. Moreover, those urging changes to takedown policies believe that recognition of fame would:

Allow brand owners to enforce their rights more swiftly and consistently;
Simplify infringement removal procedures; and
Strengthen consumer trust by improving content integrity on e-commerce sites.

The lack of specific guidelines addressing fame means that all marks are treated equally, depriving famous and well-known marks of the scope of protection they should enjoy.

They believe that using more standardized and less complex removal mechanisms would create a safer and more reliable environment for all parties involved.

The effective protection of famous and well-known brands on social media is essential to safeguard the value and integrity of these brands against potential infringements. Central to effective protection is ensuring that trademark owners have effective tools to combat infringement. The overwhelming majority of brands encounter online infringement. For this reason, many believe that the takedown policies and procedures that SMPs use must be amended specifically to recognize famous and well-known marks.

As the article suggests, revising takedown mechanisms is a complex undertaking. Both trademark owners and those advocating for changes, as well as those who support maintaining current procedures, offer legitimate arguments and concerns: some believe updates are needed, while others feel existing takedown processes are generally adequate and should remain as they are. INTA’s Famous and Well-Known Marks Committee looks forward to its continued participation in this discussion.

The Famous and Well-Known Marks Committee strongly encourages further examination and discussion of this important topic in the hope of developing an appropriate framework that would allow owners of famous and well-known marks to use takedown mechanisms with more frequency, while also recognizing concerns about the potential impact such changes to takedown policies and procedures could have on SMPs.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. The opinions expressed in this feature are those of the authors and do not purport to reflect the views of INTA or its members.