Kamdhenu Ltd. Vs The Registrar of Trade Marks (July 2023) judgment discusses the concept of well-known trademarks and the procedure for determining a trademark as a well-known trademark. It explains that historically, trademarks were registered for specific goods, and the use of the mark by others in relation to similar or related goods could constitute infringement. The 1999 Act introduced protection for service marks and well-known trade marks. Section 11 of the 1999 Act outlines the factors to be considered for granting well-known trademarks, and Section 11(8) states that if a trademark has been determined to be well-known by a court or registrar, it will be considered a well-known trademark for registration. Rule 124 of the 2017 Rules provides the process for declaring a mark as a well-known mark by the registrar.
The judgment clarifies that Rule 124 does not differentiate between well-known trademarks declared by a court or determined by the registrar. The purpose of the rule is to streamline the procedure and bring uniformity in the declaration of well-known trademarks. It also discusses the evidence and documents required for determining a trademark as well-known, such as invoices, promotion and advertising materials, participation in exhibitions, market surveys, consumer base, and enforcement records.
The Delhi High Court cited Tata Sia Airlines Ltd. v. Union of India (2023:DHC:3659) case, wherein Hon’ble Justice Singh interpreted the interplay between Section 11 of the 1999 Act and Rule 124 of the 2017 Rules. It was observed that Rule 124(5) of the 2017 Rules does not create a distinction between a well-known trade mark declared by the Court, or determined by the Registrar. In both scenarios, the procedures outlined were considered the same. Moreover, the Court also noted that the purpose of Rule 124 of the 2017 Rules was to streamline the procedure, and bring uniformity in declaration of well- known trademarks.
The judgment further explains that while an affidavit is not mandatory, documentary evidence is necessary to establish the well-known status of a trademark. The Registrar may require an affidavit if deemed necessary but should not reject an application solely on the basis of non-filing of an affidavit. The applicant has the opportunity to file an affidavit and additional documents if requested.
The decision of the Division Bench of Delhi High Court in Rolex SA v. Alex Jewellery Pvt. Ltd. [215 (2014] DLT 6] was also cited, wherein it was observed that:
“Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here.”
In this particular case, the appellant filed documents and court orders supporting its claim for well-known status. The court found that the Trademark Registry should have given the appellant an opportunity to file an affidavit if deemed necessary, instead of summarily dismissing the application. The appellant was granted the opportunity to file a supporting affidavit and additional documents, and the Registrar was instructed to consider the application accordingly.
Overall, the judgment provides guidance on the procedure and requirements for determining a trademark as a well-known trademark, emphasizing the importance of documentary evidence and the opportunity to file an affidavit if necessary.
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