Delhi High Court
New Balance Athletics Inc. vs Nineplus Shoes Private Limited on 30 April, 2024
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 22nd March, 2024
Pronounced on: 30th April, 2024
+ CS(COMM) 572/2022, I.A. 8077/2023 & I.A. 9713/2023
NEW BALANCE ATHLETICS INC. ..... Plaintiff
Through: Mr. Dushyant Mahant, Mr.
Urfee Roomi, Ms. Janaki
Arun, Ms. Anuja Chaudhary,
Mr. Ayush Dixit, Mr. Ritesh
Kumar and Ms. Soumya Jain,
Advocates.
versus
NINEPLUS SHOES PRIVATE LIMITED ..... Defendant
Through: Mr. Devender Mor, Advocate
on behalf of respondents
(through VC). Ms.
Rajeshwari H., Amicus
Curiae for defendant. Mr.
Harish Vaidyanathan
Shankar, CGSC with Mr.
Srish Kumar Mishra, Mr.
Alexander Mathai Paikaday,
Mr. Lakshay Gunawat and
Mr. Krishnan V., Advocates
for the Trade Marks Registry.
+ CS(COMM) 396/2023 & I.A. 6883/2024
RETAIL ROYALTY COMPANY & ANR. ..... Plaintiffs
Through: Mr. Urfee Roomi, Ms. Janaki
Arun, Ms. Anuja Chaudhary,
Signature Not Verified
Digitally Signed
By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 1 of 26
Signing Date:10.05.2024
10:55:10
Mr. Ayush Dixit, Mr. Ritesh
Kumar and Ms. Soumya Jain,
Advocates.
versus
SANTOSH KUMAR SHARMA TRADING AS SHIV SHAKTI
CREATIONS ..... Defendant
Through: Mr. Deepak Sharma,
Advocate for
applicant/defendant (through
VC). Ms. Rajeshwari H.,
Amicus Curiae. Mr. Harish
Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar
Mishra, Mr. Alexander
Mathai Paikaday, Mr.
Lakshay Gunawat and Mr.
Krishnan V., Advocates for
Trade Marks Registry.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
JUDGMENT
ANISH DAYAL, J.
1. These suits have been decreed in favour of plaintiffs on 31 st July, 2023 for CS(COMM) 572/2022 and on 05th April, 2023 for CS(COMM) 396/2023. Costs were also determined by the Court on 10 th November, 2023 and 08th November, 2023, respectively. The residual issue for which the plaintiffs sought relief was declaration of their respective marks as well-known marks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 ['the Act']. While the plaintiff in CS(COMM) 572/2022 Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 2 of 26 Signing Date:10.05.2024 10:55:10 [New Balance] sought declaration in respect of the their tilted 'N' mark , the plaintiff in CS(COMM) 396/2023 [American Eagle] sought declaration in respect of their marks and .
2. These matters were being heard together on this issue, and on 31st January, 2024, this Court appointed Ms. Rajeshwari H. as an Amicus Curiae to provide assistance to the Court. The issue which was being considered by this Court in both these matters, at the very threshold, was:
"Whether the declaration sought by the plaintiffs ought to be granted by the High Court, particularly in view of the fact that the defendants were not contesting the suit, or alternatively, it could be referred to the Registrar of Trade Marks under applicable provisions of the Act."
3. Arguments on behalf of the plaintiffs were addressed by Mr. Dushyant Mahant, Advocate and Mr. Urfee Roomi, Advocate respectively. Written submissions were given by the plaintiffs' counsel as well as Mr. Harish Vaidyanathan Shankar, Central Government Standing Counsel ['CGSC'] appearing on behalf of the Trade Marks Registry and by the Amicus Curiae.
Signature Not Verified Digitally SignedBy:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 3 of 26 Signing Date:10.05.2024 10:55:10
4. This Court is not adverting to the merits of the matter at this stage since the threshold determination is whether the Court, in the facts and circumstances, ought to itself grant the relief for such a declaration, or otherwise refer the matter to the Registrar of Trade Marks ['the Registrar'], or give liberty to the plaintiffs to approach the Registrar. For this purpose, it is imperative to examine the relevant provisions of the Act, opinions of Coordinate Benches of this Court and other Courts (as adverted to by the parties) and the related merits and demerits of either approach.
Relevant Provisions of the Act
5. So far as the present adjudication is concerned, following statutory provisions are of relevance:
5.1 Well-known trademarks are defined under Section 2(1)(zg) of the Act as under:
(zg) "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
5.2 Section 11(6) provides the factors to be taken into account by the Registrar for determining a trademark as a well-known trademark which are as under:
Signature Not Verified Digitally SignedBy:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 4 of 26 Signing Date:10.05.2024 10:55:10 (6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including -
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
5.3 What needs to be taken into account by the Registrar for determining whether a trademark is well-known is provided under Section 11(7) which is as under:
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account -
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;Signature Not Verified Digitally Signed
By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 5 of 26 Signing Date:10.05.2024 10:55:10
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
5.4 If a trademark has been determined to be well-known in at least one relevant section of the public in India by the Court or Registrar, the Registrar is bound to consider the trademark as a well-known trademark as per Section 11(8), which is extracted as under:
(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
5.5 The Registrar is precluded from requiring certain aspects as a condition for determination, as provided in Section 11(9), which is extracted as under:
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: -
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark -
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.Signature Not Verified Digitally Signed
By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 6 of 26 Signing Date:10.05.2024 10:55:10 5.6 Rule 124 of the Trade Mark Rules, 2017 provides the procedure for an application before the Registrar by a party seeking determination of a well-known trademark; extracted as under:
124. Determination of Well Known Trademark by Registrar. --
(1) Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known.
Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.
(2) The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11. (3) For the purpose of determination, the Registrar may call such documents as he thinks fit.
(4) Before determining a trademark as well-
known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
(5) In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.
(6) The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.
Signature Not Verified Digitally SignedBy:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 7 of 26 Signing Date:10.05.2024 10:55:10 Decisions relied upon by the Parties
6. The following decisions were relied upon by counsel for the parties, which are placed in a chronological order hereinbelow:
6.1 Tata Sons Ltd. v. Manoj Dodia & Ors., 2011 SCC OnLine Del 1520 (decision by a Single Judge of this Court) - the Court laid down factors that need to be considered while recognizing any trademark as a well-known mark. The relevant paragraphs are extracted as under:
"13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties;
(ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 8 of 26 Signing Date:10.05.2024 10:55:10 availing services being sold under that brand.
A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction."
(emphasis added) 6.2 Verizon Trademark Services LLC & Ors. v. Mr Parth Solanki & Anr., 2017:DHC:6793 (decision by a Single Judge of this Court) - while dealing with a relief seeking an order of declaration of 'VERIZON' as a well-known mark, this Court observed as under:
"21. As stated earlier, the Defendants have not contested the present suit and accordingly, they were proceeded ex parte on 21st April, 2017. Had the Defendants formally contested the Plaintiff's contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of the Plaintiff's claim that the mark VERIZON is well-known.
22. The provisions of section 11(6) - Section 11(8) of the Trade Marks Act, 1999 prescribe the guidelines to evaluate whether a trademark has attained a well-known status.
23. On a prima facie basis, this Court is of the opinion that the mark VERIZON satisfies the criteria prescribed under sections 2(1)(zg) read with sections 11(6), 11(7), 11(8) of the Trade Marks Act, 1999. However, since the Defendants have not contested the proceedings, this Court refrains itself from passing order declaring the VERIZON trademarks and logos as well-known trademarks."
(emphasis added) Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 9 of 26 Signing Date:10.05.2024 10:55:10 6.3 Samsung Electronics Company Ltd. v. M/s D R Radio Corporation & Anr., 2017 SCC OnLine Del 11733 (decision by a Single Judge of this Court) - while dealing with a declaration sought for 'SAMSUNG' as a well-known mark, this Court held as under:
"19. However, this Court is of the view that in order to ascertain the status of a well known mark in respect its trade mark, the appropriate recourse to the plaintiffs would be to resort to the procedure prescribed under Rule 124 of the latest Trade Marks Rules, 2017 and file the requisite application before the Registrar.
20. This Court is also of the view that since the defendants have not contested the present suit by leading evidence, the plaintiffs cannot circumvent the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 with respect to determination of a trade mark as a well known mark. Had the Defendants formally contested the Plaintiff's contention, this court could have passed a reasoned and well-
weighed order regarding the maintainability of the plaintiffs claim that the mark SAMSUNG is well-known.
21. This Court clarifies that it has not evaluated the plaintiffs' evidence with regard to the submission that the plaintiffs' mark is a well known mark. It is further clarified that no observation in this order will be treated as rejection of plaintiffs' request for declaration as a well known mark."
(emphasis added) Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 10 of 26 Signing Date:10.05.2024 10:55:10 6.4 Tata SIA Airlines Ltd. v. Union of India, 2023:DHC:3659 (decision by a Single Judge of this Court) - decision was rendered in a writ petition filed by the petitioner directing the respondent to consider the petitioner's letter for inclusion of the mark 'VISTARA' in the list of well- known trademarks maintained by it. The Court, relying upon Section 11(8), stated that once the mark was registered as a well-known mark, the Registrar has a clear mandate to include the trademark as a well-known mark in the list. In this regard, the following paragraphs of the decision are extracted as under:
"13. A plain reading of Section 11(8) shows that the Legislature has consciously used two distinct words i.e. 'determine' and 'consider'. Golden rule of interpretation is that the words of a Statute must be given their ordinary meaning. It is yet another rule of construction that when the words of the Statute are clear, plain and unambiguous, Courts are bound to give effect to that plain meaning, irrespective of the consequences. The use of the word 'shall' in Section 11(8) of the Act indubitably leaves not a speck of doubt that once the trademark has been determined to be a well- known mark at least in one relevant section of the public in India by any Court, there is no further scope for determination by the Registrar. Section 11(8) on a plain reading admits of no caveat or exception or any discretion with the Registrar, who is under a clear mandate to include the trademark determined by the Court as a well-known mark in the List of Well-Known Trademarks.
Petitioner is right that in the scheme of hierarchy and in view of the unambiguous language of Section 11(8), Registrar cannot Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 11 of 26 Signing Date:10.05.2024 10:55:10 review or re-determine the status of a trademark declared to be well-known by a Court and is bound to proceed to publish in the List of Well-Known Trademarks.
14. Rule 124(1) introduced by way of 2017 Rules, provides that any person may request the Registrar for determination of a trademark as well-known and lays down the procedure to do so. A conjoint reading of Section 11(8) of the Act and Rule 124(1) shows that the Scheme of the Act provides two different and distinct mechanisms for determination of a trademark to be a well-known mark viz. (a) by a Court or Registrar, which is covered by Section 11(8); and (b) by the Registrar on an application in accordance with the procedure prescribed under Rule 124 read with the relevant Schedules. This unambiguously connotes that either the Court or the Registrar can determine a trademark to be a well-known mark and it goes without saying that if either one of them has determined the trademark to be a well- known trademark, the other cannot and therefore no proprietor can be relegated to a second route. To this extent there is merit in the submissions of the Petitioner and Amici Curiae. Therefore, if the Court has declared a trademark to be a well-known trademark, then the Registrar is only required to include the said trademark in the List of Well-Known Trademarks and cannot enter into an exercise for re-determination and be it ingeminated that this position in law is not even disputed or contested by the Registrar. In fact, it is a conceded case of the Registrar, on an affidavit, that there shall not be a re-determination or re-examination of the trademark determined to be a well-known mark by a Court and the procedure will only include making a request Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 12 of 26 Signing Date:10.05.2024 10:55:10 in Form TM-M with the prescribed fee, which would be followed by requisite action under Rule 124(5), after verification of certified copy of the judgement of the Court and other administrative modalities, without resorting to the procedure prescribed under Rule 124(4). ...
44. This Court has perused the judgments relied upon by the Petitioner and is of the view that none of these judgments inure to the Petitioner's advantage. In CIT, Andhra Pradesh (supra) and Radha Krishan (supra), the Supreme Court has held that Rules are meant to carry out the purpose of the provision of the Act and there can hardly be any dispute on this proposition of law. This Court has already held above that there is no conflict between Rule 124 and Section 11(8) as both operate differently and Rule 124 is for implementation and enforcement of the provisions of Section 11(8), enabling the Registrar to include the already declared well- known mark in the list after its publication in the Trade Marks Journal. In International Society for Krishna Consciousness Bangalore (ISKCON) (supra), the Bombay High Court has declared the trademark ISKCON as a well- known trademark and there can be no two opinions that after the mark has been so declared, the Registrar will not enter into the exercise of re-determining it and would be bound by the declaration. In the present case, a categorical stand has been taken by the Registrar that once the mark is declared as well-known by the Court and an application is received for its inclusion in the List of Well- Known Trademarks, the procedure pertaining to inviting objections etc. will not be necessary and straightaway the Registrar shall proceed Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 13 of 26 Signing Date:10.05.2024 10:55:10 to publish the trademark and include it in the list, subject however to verifications etc. relating to the authenticity of the certified copy of the judgment furnished and/or other administrative and procedural formalities and modalities, all of which will be cast into a cauldron to be determined by the Registrar.
45. For the myriad reasons, this Court finds no infirmity in the stand of the Respondent on any of the grounds which learned counsels for the Petitioner/Amici Curiae have proffered."
(emphasis added) 6.5 Apollo Hospitals Enterprises v. Dr. Dheeraj Saurabh, 2023 SCC OnLine Madras 7521 (decision by a Single Judge of Madras Court) - while dealing inter alia with relief sought to declare the mark 'APOLLO' as a well-known trademark observed as under:
"13. After analyzing the said provisions and the authorities pertaining to grant of recognition of a trademark as a well-known mark, this Court is now convinced that concurrent powers are vested with both this Court as well as the Trade Marks Registry for granting recognition to a trademark as a well- known mark."
(emphasis added) Submissions on behalf of the Plaintiffs
7. Counsel for plaintiffs essentially contend that this Court has the power to adjudicate on the issue of such a declaration. The following submissions were addressed:
7.1 Attention was drawn to Section 11(6) of the Act which enlists the factors that the Registrar has to take into account for declaration of a mark Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 14 of 26 Signing Date:10.05.2024 10:55:10 as a well-known mark. Clause (v) of the said provision includes the record of successful enforcement of the rights in that mark, and in particular, the extent to which the trademark has been recognized as a well-known mark by any Court or Registrar under that record. Therefore, it was contended that the statute itself envisioned that the Court could recognize the mark as a well-known trademark and there could be a subsequent declaration by the Registrar.
7.2 Section 11(8) of the Act was also heavily relied upon in that it categorically provides that a trademark could have been determined to be a well-known mark in one relevant section of the public by any Court or Registrar, subsequent to which the Registrar should consider the trademark to be a well-known trademark. Therefore, it was contended that the statute was unequivocal in recognizing the power of the Court to declare a trademark as a well-known trademark.
7.3 The Trade Mark Rules were amended in 2017 providing an additional process for the recordal of trademark as a well-known trademark by filing an application under Rule 124 of the new Rules. It was submitted that prior to the amendment, the criteria under Sections 11(6), 11(8), and 11(9) was being followed for determination by any Court or the Registrar.
A list of trademarks declared as well-known since at least the 1990's was also appended by the plaintiffs. Introduction of Rule 124 opened up an additional avenue but did not exclude the Court's power to declare a trademark as a well-known mark and assess evidence and documents.
7.4 Public notice dated 22nd May, 2017 bearing No. CGOffice/TMR/Well-Known TM/355 issued by the Ministry of Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 15 of 26 Signing Date:10.05.2024 10:55:10 Commerce and Industries wherein certain guidelines for application under Rule 124 were given. As per the guidelines, an application should be accompanied by a copy of a judgment of any Court in India or of the Registrar where the trademark had been determined as a well-known trademark. Accordingly, it was submitted that there was a recognition by the Ministry as well of the power of a Court to determine the same.
7.5 Purely on statutory interpretation, it was submitted that the legislature consciously did not exclude the power of the Court to determine a trademark as well-known. It was argued that had the Rules expressly excluded the Court's power to declare a trademark as well-known, it would have expressly done so.
7.6 Reliance was placed on the decision on Tata SIA Airlines (supra); Tata Sons (supra), and Apollo Hospitals (supra).
7.7 Section 11(8) of the Act had not been declared as ultra vires by any Court and indeed various decisions had been passed by this Court and other Courts declaring certain marks as well-known marks.
7.8 The assumption that such a declaration can be made only after examination of evidence and post-trial is flawed since the law does not prescribe such an exclusion.
7.9 Reference by the Court to the Trade Marks Registry of an application seeking declaration as a well-known mark has no legal backing either under the provisions of the Act or any precedents; the Court can simplicitor assess the evidence before it for said declaration and may accept or decline such request. It was stated that the Court may give Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 16 of 26 Signing Date:10.05.2024 10:55:10 liberty to a party to avail itself of the additional remedy and file an application under Rule 124, but it could not refer all matters for the purposes of declaration to the Registry.
Submissions on behalf of the Trade Mark Registry
8. Mr. Harish Vaidyanathan Shankar, CGSC, submitted as under:
8.1 As per the 2017 Rules, Rule 124 has been specifically incorporated for the purposes of determination of well-known trademarks by the Registrar. It provides for invitation of objections from the public in recognition of the fact that the declaration will be "in rem". The same is also in consonance with the Joint Recommendation of the World Intellectual Property Organization ['WIPO'].
8.2 Provision for inviting objections from the public bears considerable significance, pointing out to Section 11(1) which involves a relative ground for refusal of registration inter alia that "there exists a likelihood of confusion on the part of the public". Declaration of a trademark is a declaration in rem and not in personam and such a determination ought not to be given without inviting objections from the public. For determination qua the public, Rule 124 which empowers the statutory authority to determine the same would be applicable and apposite.
8.3 Declaration of a trademark as well-known provides it a higher level of protection across classes and, therefore, the threshold for such determination ought to be much higher, and an opportunity for the public to object ought to be afforded.Signature Not Verified Digitally Signed
By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 17 of 26 Signing Date:10.05.2024 10:55:10 8.4 A suit is a proceeding in personam and the judgment can only act in personam and cannot be extended in rem. Reliance was placed on the decision of the Hon'ble Supreme Court in Vidya Drolia v. Durga Trading Corporation, (2021) 2 SCC 1 which was followed by the Bombay High Court in Godaddy.com v. Aanitt Awattam & Ors., 2023 SCC OnLine Bom 227wherein a Single Judge held that when a plaintiff seeks relief on the basis of its rights in Intellectual Property Law, it is an action in personam and not in rem. Therefore, such a declaration cannot be made in an ex- parte proceeding or where the defendant does not seek to oppose the essential decree of injunction.
8.5 Referring the matter to the Registrar or giving liberty to the parties to approach under Rule 124 would provide the Court with the benefit of an assessment at the first instance, rather than itself having to traverse the evidence without any opposition.
8.6 The decision in Tata SIA (supra) was merely related to Section 11(8) and that the Registrar was bound if a declaration had been made by the Court. There was no quarrel with the fact that Section 11(8) did recognize that the Court may determine a mark to be well-known. However, the basic power of determination was bestowed upon the Registrar, on a composite reading of the provisions extracted above.
8.7 There was no doubt that the Courts had the power to make such a determination but it may be in appellate proceedings and not by way of an original proceeding before the High Court.
Signature Not Verified Digitally SignedBy:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 18 of 26 Signing Date:10.05.2024 10:55:10 8.8 The decision in Madras High Court was passed ex parte and did not consider Rule 124. The decision in Tata Sons (supra) in 2011 was prior to the amendment and introduction of the 2017 Rules and, therefore, may not be totally relevant at present.
Submissions by the Amicus Curiae
9. Ms. Rajeshwari H., Amicus Curiae submitted as under:
9.1 From the statutory provisions, it was clear that the Registrar as well as the Court may determine whether a mark would be a well-known trademark or not. Section 11(8) uses the words "considers" as well as "determines" or "determination". The word "determination" refers to more of an adjudicatory process presupposing application of mind and not a mere opinion. The determination itself was crystallized in Rule 124.
9.2 The procedure under Rule 124 involved an application under Rule 124(1) in the prescribed form with fees and evidence; consideration whether requirements of Section 11(6) to Section 11(9) were fulfilled as per Rule 124(2); a right to call for further documents is required and to invite objections from the public under Rules 124(3) and 124(4); and then determine on the basis of material on record under Rule 124(5), whether the mark is well-known and published in the Trade Marks Journal. Rule 124(6) also gave the power to remove the trademark from the well-known list if found to be included erroneously therein.
9.3 The key factor in Sections 11(6) to 11(9) as well as Rule 124 was that the public gets an opportunity to oppose the mark. This is important Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 19 of 26 Signing Date:10.05.2024 10:55:10 since, even if it is a well-known mark, it is subject to exceptions under Sections 30 and 34 of the Act, i.e., prior use and non-infringement.
9.4 In a contested suit, the defendants would at least be deemed to represent a section of the public and dispute the well-known status of the mark, however, when a case proceeds ex-parte, the opposition element is completely absent.
9.5 Reliance was placed on the decision of this Court in Verizon (supra) and Samsung (supra) where the Court refrained from providing such a declaration.
Analysis
10. The Court has considered the submissions on behalf of the plaintiffs, the Registrar of Trade Marks and the Amicus Curiae. At the outset, this Court would like to clarify that there is no doubt, as per various provisions, that the Court can determine a mark as a well-known trademark. However, the issue for consideration is whether the Court has to necessarily go through the exercise in every case, each time the plaintiff seeks such declaration, or otherwise give the option to the party to approach the Registrar under Rule 124.
11. Submissions by counsel for plaintiffs were largely on the issue of concurrent power of the Court as well as the Registrar for determination of a well-known trademark. This may not necessarily be relevant in view of what has been clarified above. The fact that both the Court and the Registrar have the powers under the Act is also not contested by the CGSC or the Amicus Curiae. The issue is, therefore, telescoped and narrowed down to - in what circumstances must a Court necessarily take upon Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 20 of 26 Signing Date:10.05.2024 10:55:10 itself the exercise of determining a well-known trademark or alternatively refer the parties to the Registrar or give liberty to do so.
12. A bare perusal of provisions extracted above in para 5 and on which the parties have waxed eloquent, would incontrovertibly and indubitably bear out that - firstly, there is a power with the Court as well as the Registrar for determination of a mark as a well-known trademark;
secondly, there is no specific exclusion of the Court to determine the mark as a well-known trademark; and thirdly, the Registrar has the full panoply of powers to determine the trademark as a well-known trademark.
13. What are the factors which may be considered for determination of a well-known trademark finds expression in Sections 11(6) and 11(7). Certain aspects which may not be required are in Section 11(9). The Courts inter alia in cases cited above have also embellished these factors. The factors under Section 11(6) itself involve assessment of - (i) knowledge or recognition of the mark in the relevant section of the public;
(ii) knowledge in India obtained as a result of the promotion of the mark;
(iii) duration, extent, and geographical area of use of the mark; (iv) duration, extent, and geographical area of promotion of the mark and the nature of such promotion; (v) duration and geographical area of any registration or application for registration of the mark reflecting use or recognition of the mark; and (vi) record of successful enforcement in the rights in the mark and to the extent it has been recognized as a well-known trademark by any Court or Registrar.
14. A bare perusal of these factors would show there is an extensive set that needs to be considered for determination, which also involves Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 21 of 26 Signing Date:10.05.2024 10:55:10 knowledge or recognition of the mark by relevant section of the public and, at the very least, an investigation of the Trade Marks Register of registrations/applications for registration, and the duration and geographical area of the same. Section 11(7) involves taking into account
- (i) number of actual potential consumers; and (ii) number of persons involved in the channels of distribution; and the (iii) business circles dealing with goods or services.
15. In order to pass muster by plaintiffs seeking such declaration, evidence would have to be led. In an ex-parte/non-contested situation, that evidence would remain unrebutted, uncontested and unchallenged, thereby giving the plaintiff a wide play in making the Court believe that the evidence presented is correct, merely because it is supported by an affidavit. This, in cases of ex-parte/uncontested situations, would be, in the opinion of this Court, giving an expansive, unmitigated, undiluted, unopposed field of play to the plaintiff. This was specifically not countenanced by a Coordinate Bench of this Court in Verizon (supra) and Samsung (supra) as noted above in paras 6.2 and 6.3.
16. Quite to the contrary, in an application made before the Registrar, a process of at least inviting objections from the public is mandated, which provides a window of opportunity to any member of the public, who would be potentially affected by the declaration, (a right in rem) to object, and for the plaintiff/applicant to contest the same. This process, which is mandatory under the Rule, at least provides a modicum of justiciable process, even if there is no objection which is ultimately received.
Signature Not Verified Digitally SignedBy:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 22 of 26 Signing Date:10.05.2024 10:55:10
17. Moreover, the Registrar, who is the repository of the full Register, has the capacity, ability and the duty to check all aspects, of registration/applications for registrations, in respect of the mark in order to assess the factors which form part of the determination as per Section 11(6). The Court, arguably, can also potentially call for details of the Register but that would be an unnecessary retard in an otherwise smoothly turning wheel under Rule 124, before the Registrar. Also, the Court would have the benefit of a prior determination by a statutory authority that is fully empowered to do so.
18. Even on a bare perusal of the provisions, it would be noticed that Section 11(6), 11(7), 11(9) are all prefaced and commence with the phrase "the Registrar shall" in relation to the determination process. This, read along with Rule 124, specifically provided in the 2017 Rules, would indicate quite unequivocally the intention of the legislature that the determination requires a mandatory process to be followed by the Registrar.
19. Interestingly, while assessing the language of Section 11(6) in a bit more detail, it transpires that while the determination in the initial part of the provision is of the Registrar, factor in clause (v) uses the word "recognized by any Court". Maybe a difference is contemplated by the legislature or by the Registrar between "determination" and "recognition". This could potentially mean that a Court's observation in relation to enforcement of rights by a plaintiff in their mark may be taken into consideration by the Registrar in the process of determination. The Registrar, therefore, under Rule 124(3) could require the applicant to put Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 23 of 26 Signing Date:10.05.2024 10:55:10 on record all successful enforcements through any Court in the country or by the Registrar's office, and examine the same to see the scope of assessment and recognition of the reputation and goodwill of the mark, and whether those assessments throw some light on factors in Sections 11(3) and 11(6).
20. Submission by the CGSC, in that the declaration under Section 2(1)(zg) of the Act is a declaration in rem and, therefore, ought to involve a first instance determination at the very least by the Registrar, leaving the possibility of an appeal to the Appellate Courts, has considerable merit. This would provide a much more holistic, fair, and composite process not just to the plaintiff but also to the party which may potentially oppose the mark. The pendency of a suit in the Court against specific defendants, predominantly seeking relief against infringement/passing off, will never be to the knowledge of the public at large. Quite to the contrary, a potential opposer will at least be watchful of the notifications by the Registrar of Trade Marks if it seeks to oppose an application for declaration.
21. Reliance on decision in Tata SIA Airlines (supra) may not be helpful qua the issue framed by this Court. In Tata SIA Airlines (supra), the issue was compliance by Registrar of a determination already made by the Court of a well-known mark. Tata Sons (supra) and Apollo Hospitals (supra) only state what is obvious from the statutory provisions.
22. This Court is, therefore, of the opinion that while it has the power to determine a trademark as well-known, post an assessment, it is not precluded from referring the plaintiff to seek a declaration/determination Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 24 of 26 Signing Date:10.05.2024 10:55:10 by the Registrar under Rule 124 if they wish to be declared as a well- known mark, rather than take the determination upon itself, where the matter is uncontested or ex-parte i.e. in absence of an unconcerned defendant. This Court, therefore, reiterates, endorses, and recommends the approach taken by the Single Judge in Verizon (supra) and Samsung (supra). In both, Court refrained from making such a declaration and held that in order to seek such a declaration, it would be apposite for the plaintiffs to approach the Registrar and undergo the route of Rule 124 of the Trade Mark Rules, 2017. In Samsung (supra), it was held that "the appropriate recourse to the plaintiffs would be to resort to the procedure prescribed under Rule 124 of the Trade Mark Rules, 2017 and file the requisite application before the Registrar".
Conclusion
23. While the Court is not precluded from taking the determination upon itself if it wishes to, but the more judicious, balanced, equanimous, circumspect and sagacious approach would be to recommend to the plaintiff to approach the Registrar of Trade Marks under Rule 124, pay the requisite fee, and follow the mandated process; more so, in ex-parte and unopposed matters.
24. Coming to the facts and circumstances in these two suits, where the defendants have not contested the suit and the plaintiff has, therefore, got a decree in their favour without contest/opposition, this Court, for the reasons mentioned above, is not inclined to grant the relief of declaration of their marks as well-known trademarks, and instead gives them the liberty to approach the Registrar under Rule 124 of the Trade Marks Rules, Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 25 of 26 Signing Date:10.05.2024 10:55:10 2017 for such determination/declaration on merits of their applications post compliance of the requisite procedure.
25. This Court clarifies that it has not evaluated the plaintiffs' evidence qua their plea of such a declaration and no observation herein is to be read as a rejection of their plea on merits.
26. Suit is disposed of in the above terms. Pending applications, if any, also stand disposed of.
27. Judgment be uploaded on the website of this Court.
ANISH DAYAL JUDGE APRIL 30, 2024/MK/sc Signature Not Verified Digitally Signed By:MANISH KUMARCS(COMM) 572/2022 & CS(COMM) 396/2023 26 of 26 Signing Date:10.05.2024 10:55:10