A. Introduction:

Much of the chatter around the enactment of the Trade Marks Rules, 2017 (‘Rules’) revolved around Rule 124[1], which lays down the procedure for the determination of a well-known trade mark (‘WKTM’) by the Registrar of Trade Marks (‘Registrar’).

It is pertinent to note that the Rules flow out of the Trade Marks Act, 1999 (‘Act’). While the Act lays down the law for the protection and enforcement of trade marks in India, the Rules stipulate the procedure for giving effect to the provisions of the Act. This is known as subordinate legislation.

Although the Act has always recognized the concept of a WKTM under Section 2(1)(zg)[2], the old trade marks rules (i.e., Trade Marks Rules, 2002), did not provide for any process for the determination of a trade mark as a WKTM upon application made to the Registrar. Instead, pre-2017, a court or the Registrar would, during adversarial proceedings (such as actions for infringement/passing off, opposition or rectification of a trade mark), determine a trade mark as well-known, and such trade mark would be included in the List of Well-Known Trade Marks[3] (‘List’). Now, the newly introduced Rule 124 under the Rules addresses the previous lack of procedural options available to proprietors and presents them with the opportunity of having their trade mark declared as a WKTM upon application.

Rule 124, however, was not well-received by those proprietors whose trade marks had already been declared as WKTMs by the courts/ the Registrar. This is because, as per Rule 124, such proprietors now had to undertake the additional step of making a particularly costly application to the Registrar to have their trade marks included in the List, despite their trade marks having been declared as WKTMs.

This particular issue was agitated before a Single Bench of the Hon’ble Delhi High Court (‘DHC’) in the case of Tata Sia Airlines Limited v. The Union of India[4] (‘Tata Sia Case’). However, before examining the Tata Sia Case, here is a small rundown of the WKTM provisions under the Act and the Rules.

B. Well-known Trade Marks – the concept, criteria, and procedure:

  1. Concept: The Act provides for a class-based categorization of trade marks, i.e., each trade mark is categorized into a class based on the goods or services in respect of which it is used/ proposed to be used in the course of trade. Thereafter, in the application for registration, a description of goods/ services is to be provided to indicate the specific goods/services falling within a particular class, that the trade mark applies to. The proprietor of a trade mark, therefore, will only enjoy monopoly/ exclusivity over a particular trade mark for a particular set of goods/services (in respect of which it is used/proposed to be used) falling within a particular class. Currently, there are 45 classes set out under the Nice Classification[5], which is the internationally accepted class-wise categorization for trade marks.

A WKTM, however, transcends class-wise categorization. A WKTM as defined under the Act[6] is a trade mark which has acquired such immense goodwill and reputation in the minds of the public and is so inextricably linked to its source/ origin, that any use of the WKTM, even in relation to unrelated goods/ services (that are not provided under such WKTM by its proprietor) would amount to an indication to the public that the said unrelated goods or services originate from or are connected with the said source/proprietor of the WKTM. In addition to the above, a WKTM declaration comes with a heavy presumption of immense goodwill and reputation in favour of the said WKTM, which enables its proprietor to easily establish its rights under the WKTM, and consequently, their erosion, if any.

  1. Criteria: The determination of a trade mark as a WKTM is contingent on the satisfaction of, inter alia, the following criteria under Sections 11(6) to 11(9)[7] of the Act:
    1. the knowledge and recognition of the mark in the relevant section of the public;
    2. the duration, extent, and geographical extent of use and promotion of the mark;
    3. prior registrations/applications for registration of the mark; and
    4. records of successful enforcement of the mark, in particular the extent to which a trade mark has been recognized as well known by any court/the Registrar.

For this article, Section 11(8)[8] of the Act is of particular significance. This provision is supplemented by Rule 124(5)[9] of the Rules.

  1. Procedure: As per Rule 124[10], in order to avail a WKTM declaration from the Trade Marks Registry (‘Registry’), the proprietor of the trade mark is required to make an application under Form TM-M along with all the necessary evidence, and the prescribed fee of INR 1,00,000/-. After scrutiny of the application and evidence, the Registrar, if satisfied, will publish the trade mark in the Trade Marks Journal for a period of 30 days, for objections from third parties. In case of no objections, the trade mark will be declared as a WKTM and will be included in the List.

This procedure also applies where a trade mark is already declared as a WKTM by a court/the Registrar, however with a small variation. In such cases, Section 11(8)[11] read with Rule 124(5)[12] requires that an application with the prescribed fee is once again made to the Registrar, along with a copy of the order/ judgement vide which the trade mark was declared as well-known. Then the Registrar, after scrutiny of the application, directly declares the said trade mark as well-known and includes it in the List. No 30-day objection period is observed in such a case.

The issue that arose for consideration in the Tata Sia Case is exactly this, i.e., whether a proprietor (in this case, the Tata Sia Airlines Limited, hereinafter referred to as ‘Tata Sia’), can be compelled to comply with Rule 124[13] even after a court has already determined its trade mark to be well-known. In simpler terms, is the proprietor of a trade mark still required to make a formal application along with payment of the prescribed fees as stated in the Rules even after a court has already determined the trade mark as well-known?

C. The Tata Sia Case:

  1. Facts: In the Tata Sia Case, the Petitioner, i.e., Tata Sia approached the Hon’ble DHC seeking relief for inclusion of its trade mark ‘VISTARA’ in the List. Prior to the institution of these proceedings, ‘VISTARA’ had been declared as a WKTM vide the DHC’s judgement dated August 05, 2019, in the case of Tata Sia Limited v. Pilot18 Aviation Bookstores and Anr[14]. Following this, Tata Sia addressed a letter to the Registrar requesting ‘VISTARA’’s inclusion in the List in terms of the DHC’s judgement. This request was declined by the Registry. Being aggrieved by such refusal, Tata Sia moved before the DHC, seeking a writ of mandamus[15] directing the Registrar to consider its letter dated August 23, 2018, and include ‘VISTARA’ in the List.

In the present case, the Union of India relied on an affidavit filed by the Registry, within whose purview this dispute arose. Therefore, for the purpose of this article, any references to the ‘Respondent’ shall mean the Registry. Further, notices were also issued to various bodies, such as inter alia, INTA and AIPPI, whose counsels acted as amicus curiae[16] (collectively, ‘amici curiae’) for the purpose of the present proceedings.

  1. The Petitioner’s arguments: Tata Sia, inter alia, argued that the court’s determination of a WKTM is rendered fruitless when the Registrar refuses to accept the WKTM without application and payment of the fee. The ambit of Rule 124(1)[17] makes it amply clear that the Rule only applies to cases where an application is made to the Registrar for the determination of a WKTM. The Registrar could not be permitted to re-adjudicate on the nature of a trade mark as well-known, where there already is a determination to this effect by the court.

Tata Sia further argued that the distinct use of the words ‘determine(meaning expression of opinion which ends a controversy or a dispute by some authority), and ‘consider(meaning to regard as/ deem to be) in the language of Sections 11(6) to 11(8)[18] should be construed literally. Where Sections 11(6) and 11(7)[19] lay down parameters for the determination of a WKTM by the Registrar, Section 11(8)[20] states that where the court has determined a trade mark as well-known, such determination must be considered by the Registrar as binding. Cases falling under Section 11(8)[21] would not be required to meet the prerequisites under Rule 124(1)[22].

Tata Sia challenged the Respondent’s argument that where there is a prior determination of a WKTM by a court, the Registrar will only verify its authenticity and then will proceed with the publication of the WKTM without inviting objections, however, subject to the collection of the prescribed fee. In this regard, Tata Sia argued that this interpretation would make Section 11(8)[23] of the Act subject to Rule 124[24], which is against the principles of statutory interpretation/ subordinate legislation.

Finally, Tata Sia argued that it was prejudiced by the Registrar’s refusal to add ‘VISTARA’ as a WKTM to the List. As detailed earlier, a WKTM functions like a notice to all prospective proprietors regarding the ambit of rights enjoyed by the WKTM.

  1. Submissions of the Amici Curiae: The amici curiae submitted that Rule 124(1)[25] was not meant to create a conflict with Section 11(8)[26]. At best, Rule 124[27] was only an administrative procedure for the recordal of a WKTM.

They further submitted that the Act and the Rules provide for two distinct opportunities to determine a trade mark as well-known, viz. either by the Registrar (under Rule 124[28]) or by a court (under Section 11(8)[29]). Consequently, in the case of the determination of a WKTM by a court, there was no requirement for an application under Form TM-M and payment of fees. There had to be a simpliciter recordal of the WKTM in the List.

Relying on the judgement of the Supreme Court (‘SC’) in the case of Whirlpool Corporation v. The Registrar of Trade Marks, Mumbai & Ors.[30], the amici curiae submitted that the SC examined the powers of the Registrar and the court and held that jurisdiction of both is mutually exclusive. Therefore, where proceedings are pending before the High Court, the Registrar will not touch those proceedings, since the High Court, besides being the Appellate Authority of the Registrar, has primacy over the Registrar in all matters under the Act.

Finally, the amici curiae suggested that two parallel procedures should be followed when there is a question of determination of a WKTM, i.e., one under Rule 124(1)[31], where there is a form and the fee payable to the Registrar, and the other under Section 11(8)[32], where a simple letter to the Registrar should suffice.

  1. The Respondent’s Arguments: The Respondent made the following distinction between the mandates of Rule 124(1) and Rule 124(5)[33]:
Rule 124(1)Rule 124(5)
The Registrar would, upon application, actively determine whether a trade mark is well-known, and adjudicate upon the well-known nature of the trade mark on the basis of the evidence presented to it.The Registrar would, upon application, directly publish the trade mark in the Journal while declaring it as well-known and include it in the List.

There would be no re-adjudication by the Registrar, and the Registry’s role will only be confined to the scrutiny of the order/ judgement.

The Respondent further argued that the language in Form TM-M and Entry 18[34] in the First Schedule to the Act made it clear that the legislative intent was to create a form for ‘inclusion’ of the trade mark, and not ‘determination’ of the trade mark as well-known. Further, since the scheme of the Rules was such that, any form filed without the prescribed fee would be deemed to not have been filed at all, it was mandatory to file the request for inclusion under Form TM-M with the prescribed fees.

The Respondent also argued that if Section 11(8)[35] read with Rule 124[36] was to be interpreted in a manner suggested by Tata Sia, the Registrar would act on a mere letter or representation, without any verification including one relating to the authenticity of the certified copies supplied. This would reduce the office of the Registrar to a mere post office, which could be detrimental to the interests of some proprietors.

Finally, the Respondent also relied on the judgement of the SC in Sreenivasa General Traders and Others v. State of Andhra Pradesh and Others[37], where it was held that the power of the legislature to levy a fee is conditioned by the fact that there must, by and large, be a quid pro quo for the services rendered. However, the relationship between the levy of fees and services rendered is one of a general character and cannot be determined with mathematical exactitude.

  1. The Court’s findings: After hearing the Parties’ extensive arguments, the DHC in the Tata Sia Case held as follows:
  1. The court concurred with Tata Sia and the amici curiae on the contention that Section 11(8)[38] of the Act was mandatory, and therefore, where there was a declaration by the court of a WKTM, the Registrar was bound to proceed with the recording the WKTM in the List.
  2. The court, however, rejected Tata Sia’s and the amici curiaes’ contention that the scope of Rule 124[39] was only restricted to cases where an application for determination of WKTM was made to the Registrar. On the contrary, the court took the view that Rule 124[40] operates in two scenarios, (a) where the determination of the WKMT is made by the Registrar under 124(1)[41] and (b) where the inclusion and publication of a trade mark already declared well-known by a court is to be undertaken by the Registrar under Rule 124(5)[42]. Therefore, where a WKTM was to be included in the List, a request under TM-M with the prescribed fees would mandatorily have to be made, irrespective of whether the case fell within the purview of scenario (a) or scenario (b) above.
  3. The court applied the Golden Rule of Interpretation of a Statute and held that the words in the statute must be given their literal and natural meaning, and the intention of the legislature must be seen from the language employed in the statute itself. Therefore, where there is no obscurity or ambiguity and the intention of the legislature is conveyed, there is no scope for the court to innovate or take upon itself the task of amending or altering statutory provisions.
    Accordingly, the court held that Rule 124[43] is an enabling provision giving effect to Section 11(8)[44] after the trade mark is declared as well-known by judicial order, i.e., even where a trade mark is declared as a WKTM by the court, Rule 124[45] 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)[46] thereof. This interpretation was based on a plain reading of both provisions.
  4. The court further held that the above interpretation was fortified by reading the entire scheme of the Rules along with the First and Second Schedules thereto, which rendered the inescapable conclusion that, even for a request to include a WKTM in the List, Form TM-M is mandatory. This was further fortified on a perusal of Form TM-M Part B whereof was concerned with ‘Purpose of request’ and Entry ‘k’[47].
  5. Deciding in favour of the Respondents, the court finally determined the framers of the Rule had carefully used the words ‘Request for inclusion of a trade mark’ and not ‘determination’ of a trade mark. Therefore, the fee of INR 1,00,000/- has been prescribed not just for the determination of the trade mark but also for the purpose of inclusion of a WKTM (already determined by a court) in the List. The deposit of such fee was mandatory and failure to deposit the fee prescribed would result in the application for inclusion of the WKTM in the List deemed to have not been filed at all.


D. Conclusion:

The Tata Sia Case presents a unique view taken by the court in the context of the harmonious interpretation of Section 11 with Rule 124 but is disadvantageous to proprietors whose trade marks have already been recognized by a court as distinctive.

The Respondent’s contention that the Registry would play the role of a mere postman is equally meritorious, but the fact remains that securing a WKTM declaration before a court is no easy feat. Therefore, it is this author’s belief that where a party has successfully been able to prove the well-knownness of a trade mark, they should be able to have it included in the List without the payment of an additional fee.

[1]Rule 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.”

[2] Section 2(1)(zg): a well-known trade mark in relation to any goods and services means a trade 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 likely be taken as indicating a connection in the course of trade or rendering of service between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

[3] Accessible at: https://ipindiaservices.gov.in/tmrpublicsearch/well-known-trademaks-updated.pdf

[4] W.P.(C)-IPD 64/2021

[5] Accessible at: https://www.wipo.int/classifications/nice/nclpub/en/fr/

[6] Supra Note 2

[7] Section 11(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 application for registration of that trade mark under this Act to the extent that 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.

Section 11(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;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

Section 11(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.

Section 11(9): The Registrar shall not require as a condition, for determining whether a trade mark is 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.

[8] Supra Note 7

[9] Supra Note 1

[10] Supra Note 1

[11] Supra Note 7

[12] Supra Note 1

[13] Supra Note 1

[14] CS (COMM) 156/2019

[15] A writ of mandamus is sought where the person aggrieved moves before a Court seeking that directions be issued to an inferior court or office for the completion of a public/statutory duty.

[16] Literally translated, amicus curiae means ‘friend of the court’, and refers to an impartial advisor of the Court of law in particular cases.

[17] Supra Note 1

[18] Supra Note 7

[19] Supra Note 7

[20] Supra Note 7

[21] Supra Note 7

[22] Supra Note 1

[23] Supra Note 7

[24] Supra Note 1

[25] Supra Note 1

[26] Supra Note 7

[27] Supra Note 1

[28] Supra Note 1

[29] Supra Note 7

[30] (1998) 8 SCC 1

[31] Supra Note 1

[32] Supra Note 7

[33] Supra Note 1

[34] Entry18: “Request to include a trade mark in the list of well-known trade mark.

[35] Supra Note 7

[36] Supra Note 1

[37] (1983) 4 SCC 353

[38] Supra Note 7

[39] Supra Note 1

[40] Supra Note 1

[41] Supra Note 1

[42] Supra Note 1

[43] Supra Note 1

[44] Supra Note 7

[45] Supra Note 1

[46] Supra Note 1

[47] Supra Note 34

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