The Single Bench of the Delhi High Court (the “Court”) on 25 May 2023 in TATA Sia Airlines v. Union of India, W.P.(C)-IPD 64/2021, dismissed the writ of mandamus*and held that even where a trade mark is declared to be a well-known trade mark by a Court, Rule 124 of the Trade Marks Rules, 2017** (the “TM Rules”) will apply with respect to the procedure for publication and inclusion, save and except, calling for documents and inviting objections under sub-rules (4) and (5) thereof.

Background

·         The Petitioner’s trade mark, VISTARA® was declared as a well-known trade mark across all classes by the Court’s decree dated 05.08.2019 in the suit titled TATA SIA Airlines Limited v. M/s. Pilot18 Aviation Book Store & Anr., CS (COMM) 156/2019

·         The Petitioner by its letter dated 23.08.2019 requested the Registrar of Trade Marks (the “TM Registry”) that by virtue of the decree dated 05.08.2019 to include the trade mark VISTARA® in the list of well-known trademarks maintained by the TM Registry as per Section 11 (8)^ of the Trade Marks Act, 1999 (the “Act”).

·         The TM Registry did not accede to the Petitioner’s request and did not take any requisite action as the Petitioner did not file the requests for inclusion of the trade mark under the relevant form as per the Act and the TM Rules.

·         Being aggrieved, the Petitioner filed this writ of mandamus directing the Respondent to consider Petitioner’s letter dated 23.08.2019 for inclusion of the trade mark VISTARA® in the list of well-known trademarks maintained by the TMR Registry.

·         Considering the facts and circumstances, the Court also issued notices to organizations representing the IP lawyers as well as brand owners such as INTA and AIPPI to file amicus briefs and assist the Court to address the issues.

Issues

1)     Whether the TM Registry can re-adjudicate the declaration of well-known trade mark in the garb of practice and procedure prescribed under Rule 124 of the TM Rules?

2)     Whether there are two mechanisms for declaration of a well-known trade mark, that is, one by the Court and the other by the TM Registry?

3)     Whether the scope and ambit of Rule 124(1) of the TM Rules is plainly evident from the heading and language of the TM Rules that its applicability is restricted to a request by a proprietor for ‘determination’ of the trade mark as a well-known trademark by the TM Registrar and relates to Section 11(6), (7) and (9) of the Act?

4)     Whether in cases where a trademark has been declared to be a ‘well-known trademark’ by a court’s order, the Petitioner is still required to comply with Rule 124 of the TM Rules and pay the requisite fee (INR 1,00,000/-) along with the relevant form (TM-M) for inclusion of the trade mark in well-known list maintained by the TM Registry?

Observations by the Court

·            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 trade mark to be a well-known mark viz. (a) by a Court or Registrar, which is covered by Section 11(8) of the Act; and (b) by the Registrar on an application in accordance with the procedure prescribed under Rule 124 of the TM Rules read with the relevant schedules.

·            The aforesaid unambiguously connotes that either the Court or the Registrar can determine a trade mark to be a well-known mark and it goes without saying that if either one of them has determined the trade mark to be a well-known trade mark, the other cannot and therefore, no proprietor can be relegated to a second route.

·            In the TM Registry’s order No. 31 of 2018 dated 08.08.2018 it was notified that if it is found that the trade mark has been determined as a well-known trade mark by a competent Court or Registrar then following the mandate under Section 11(8) of the Act, the trade mark shall proceed for publication in Trade Marks Journal directly under Rule 124(5) of the TM Rules.

·            The Registrar also in its affidavit mentioned that there shall not be a re-determination or re-examination of the trade mark determined to be a well-known mark by a Court and the procedure will only include making a request in Form TM-M with the prescribed fee, which would be followed by requisite action under Rule 124(5) of the TM Rules, after verification of certified copy of the judgment of the Court and other administrative modalities, without resorting to the procedure prescribed under Rule 124(4) of the TM Rules.

·            Section 11 (8) of the Act does not provide a mechanism and/or procedure to include the trade mark so declared in the list of well-known trade marks and hence, the significance of Rule 124 of the TM Rules.

·            The Rules can fill in the gap and in fact the very purpose of framing Rule 124 of the TM Rules was to streamline the procedure for determination of a trade mark as well-known by the Registrar as an alternate by a non-adversarial mechanism and also its publication and inclusion in the list. There is no conflict between Section 11(8) of the Act and Rule 124 of the TM Rules and both operate in two different fields, one stipulating a deeming fiction and the other providing a procedure for enforcement of Section 11 of the Act.

·            As regards the scope and ambit of Rule 124 (1) of the TM Rules, the Court took the literal interpretation and observed that it is trite that the heading of a Section or marginal note may be relied upon to clear any doubt or ambiguity on the interpretation of a statutory provision and to discern the legislative intent. However, when the Section is clear and unambiguous, there is no need to traverse beyond those words and the headings or marginal notes would not control the meaning of the body of the Section.

·            The framers of the Rule have carefully used the words ‘Request for inclusion of a trade mark’ and not ‘determination’ of a trade mark under the relevant form (TM-M). Therefore, when the Act, TM Rules and the Schedules are read in entirety there can be no doubt that:

o   the fee of INR 1,00,000/- is prescribed not just for determination of the trade mark but for inclusion of the trade mark in the list of well-known trade marks; and

o   Fee deposit is mandatory and failure to deposit the fee prescribed or even where the deposit is of insufficient fee, consequence that the document shall be deemed not to have been filed for the purposes of any proceeding under TM Rules will follow.  

Analysis

In the present case, the Court discussed and observed that there are two routes available for declaration of a well-known trademark, that is one by a competent Court in India and another by the TM Registry.

Prior to the TM Rules, any declaration of well-known trade mark by a competent Court in India; a trade mark would be included in the list of well-known trade mark maintained by the TM Registry provided a letter and/or communication is made by the proprietor/brand owner.

However, post the TM Rules (being prospective in nature) if a trade mark has been declared as well-known even by a competent Court in India, the trade mark proprietor/brand owner still has to make an official request under the relevant form under the Act and the TM Rules for the inclusion of its trade mark in the well-known list maintained by the TM Registry.

The Court herein discussed in detail the intent of the legislature and used the ‘literal interpretation’ principle in arriving to the conclusion and observed that “it is clear that it is well-settled as a canon of construction that Statute must be read as a whole and in its context. Statute is an edict of Legislature and the Courts must not cross the thin line between interpretation and adjudication and legislation. It is also palpably clear that only because the implementation of a Statute results in harsh or inconvenient consequences, where the provision is plain and unambiguous, the Courts should not give a different interpretation.”

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* Mandamus – As per Black’s law dictionary, Ninth Edition – “A writ issued by a court to compel performance of a particular act by lower court or a governmental officer or body, to correct a prior action or failure to act.”

**Rule 124 of The Trade Marks Rules, 2017 – Determination of well-known Trade Mark 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.

11. Relative grounds for refusal of registration 

….

(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. 

Click hereto view the court order.

Authors: Nitin Abhishek & Ruchi Singh

Trademark Attorney

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