The Delhi High Court, in its Order passed in the matter of Kamdhenu Limited vs. Registrar of Trademarks [C. A. (Comm. IPD – TM) 66/2021] stated that an Affidavit is not a ‘mandatory’ requirement for granting well-known status to a trademark in India.
In this case, the Appellant, Kamdhenu Limited, had filed a request to include ‘KAMDHENU’ in the list of Well-Known trademarks before the Registrar of Trademarks. Along with the request, the Appellant had also enclosed various supporting documents, including but not limited to judicial orders, newspaper advertisements, contracts, invoices, advertising and promotional materials. The Registrar pursuant to a hearing, rejected the request, citing failure on the part of the Applicant to provide evidence of the well-known status of the trademark by way of an Affidavit. An appeal against the said order was initiated by the Appellant before the Intellectual Property Appellate Board (IPAB), however, following the abolition of the IPAB, the appeal was transferred to Delhi High Court.
The Appellant submitted that the Registrar’s approach was erroneous, since the primary ground on which the request was rejected was non-filing of evidences by way of an Affidavit, which could have been considered as a ‘curable defect’ at best. It was further submitted that Rule 124 of the Trade Marks Rules 2017 does not provide for ‘mandatory’ submission of evidences only by way of an Affidavit, as opposed to some Rules of the Trade Marks Rules, which clearly mandate filing of an Affidavit. The Appellant also invoked Section 129 of Trade Marks Act 1999, wherein while evidence shall be given by way of an Affidavit, the discretion also lies with the Registrar to accept oral evidence, instead of or in addition to, the evidence provided by Affidavit.
The Respondent referred to the Public Notice dated 22 May 2017 issued by the Office of the Controller General of Patents, Designs and Trademarks, and stated that given the nature of evidence required to be filed for declaration of a well-known trademark, it is implied that the evidences have to be filed by way of an Affidavit and non-compliance would mean that the Registrar cannot the said evidence.
The Court observed that the Registrar, in the process of determination, possesses the discretion to provide an opportunity to the Applicant to file such an Affidavit rather than outright rejecting an application in an arbitrary fashion. The Court laid emphasis on the fact that mere non-filing of an Affidavit by way of evidence shall not be fatal to the application for determining its well-known status.
The Court further provided insights towards the practical applicability of Rule 124 of the Trade Marks Rules 2017 by stating that the said rules use the word ‘Evidence and Documents’ and the same could include Affidavits by way of Evidences and other documents. However, it cannot be construed that an Affidavit would be mandatory, as long as there are sufficient evidences.
The Court, while rejecting the contentions of the Respondent, granted the Appellant the opportunity to file a supporting Affidavit and any additional documents in support of its application to grant Well-Known status for the Appellant’s trademark ‘KAMDHENU’. The Appellant was asked to file the said Affidavit before the Registrar of Trade Marks within a period of eight weeks and directed the Registrar to afford a hearing and decide on the application on merits in accordance with the law.
To view the court order, please click here.
Author: Rommel Pandit