TMT Law Practice > New Delhi, India > Firm Profile

TMT Law Practice > Firm Profile

ABOUT OUR FIRM

TMT Law Practice is a mid-size law firm offering a wide array of services in the Technology, Media and Telecommunications sectors. The firm’s services include practice area offerings such as Intellectual Property, Dispute Resolution & Arbitration (including White Collar Crimes), Regulatory Litigation & Advisory, Corporate/Commercial and Transactional support in Mergers & Acquisitions, Private Equity and Venture Capital transactions, Competition Law, Insolvency & Bankruptcy, Employment Law. We also provide Policy and Legislative support across industry verticals. The Firm represents a broad range of clients including Fortune 500 companies, Small & Medium Enterprises (SMEs) and Start-ups.

While the firm engages in the practice of the conventional domains of law, it is also heavily invested in the niche, emerging areas of practice including Technology, Space and Aviation; Pharma, Life Sciences and Healthcare; Data Privacy and Protection; Sports; E-commerce and Cybersecurity; IoT and AI; FinTech, HealthTech and AgriTech.

Abhishek Malhotra, the Founding Partner of the firm, graduated from National Law School India University, Bangalore. He went onto earn an LLM degree from the Franklin Pierce School of Law, USA and was admitted to the Bar in the State of California. Since then, he has gathered two and a half decades of experience in India, with expertise in Intellectual Property, TMT, Regulatory Litigation & Advisory as well as Commercial Disputes. The other partners include Sapna Chaurasia who leads the Disputes vertical in Mumbai; Sanjay Kumar, the practice lead for the Pharma, Life Sciences and Healthcare practice; Rajeev Parashar leads the Corporate/Commercial and Transactional practice of the firm; Meghana Chandorkar is the Media & Entertainment transactional practice lead; Aahna Mehrotra Leads the Sports & Gaming and Entertainment verticals; Bagmisikha Puhan leads the Technology and Digital Healthcare space along with the Data Protection practice of the Firm. Anuradha Singh is an Associate Partner who has recently joined the firm and leads the Telecom and Information Technology practice segment of the Firm. Anushree Yewale is an Associate Partner who, along with Meghana, leads the largest industry verticals for the firm’s Media Practice. Harsh Buch is an Associate Partner who leads litigation practice in Delhi. We also rely upon our network of Of Counsel, Deepak Biswas for the Banking & Finance, Energy and power, Insolvency and Employment Laws and Ricab Chand, who takes care of the Disputes Practice.

The Firm stresses on developing well-rounded, solution-oriented professionals, who specialise in client-focused service delivery.

OUR SPECIALIST SECTORS

We represent clients across the following Specialist Sectors:

• MEDIA & ENTERTAINMENT

The entire spectrum of the Media and Entertainment industry, including OTT, Television, Films, Radio, Music, Print, Events, Fashion and Art. The Firm works with domestic as well as international clients in rendering advisory, support and litigation services which are peculiar to the media and entertainment sector. The Firm’s lawyers have worked as in-house counsels at Media companies, and hence offer sector-centric expertise. The Firm represents industry associations across the film, television, events and radio domains. Lawyers at TMT Law Practice have advised on end-to-end production agreements and negotiations; broadcasting regulatory issues at the Supreme Court of India and the TDSAT; Liability of OTT platforms and News channels arising out of Intermediary Guidelines, 2021; cross-border M&A; precedent-setting litigation, especially in the music licensing domain; and the like.

• SPORTS & GAMING

The Sports & Gaming sector, where our lawyers have been at the forefront of delivering solutions to National Sports Federations, League Owners of Professional Leagues, Sports Management Companies, Sportspersons and Broadcasters. Sports is an emerging area of practice in the country, both from the business as well as the legal standpoint. Our lawyers, however, have been at the forefront of discharging quality legal advice to this nascent practice area. In addition to the advisory services, our lawyers have created a large body of work in terms of developing the legal structure, including through policy / regulatory intervention. The Firm has also been at the forefront of advising on legality and operational aspects of fantasy sports, e-sports and Real Money Gaming.

• TECHNOLOGY

A wide variety of Technology industries, such as Fintech, E-commerce, Intermediaries, Digital Healthcare & Pharmaceuticals, Unmanned Aerial Vehicles, Artificial Intelligence, Data Protection & Cybersecurity, Commercial Space, AgriTech and Information Technology & IT Enabled Services.

• DATA PRIVACY

With a volatile regulatory environment around information technology and Data Privacy in the country, the industry-wide feeling of vulnerability vis-à-vis alignment of their operations with the regulatory frameworks of several jurisdictions is real. Our team of lawyers is efficiently bridging the gap, by constantly interacting with the government representatives through think tanks on policy and regulatory issues. Our lawyers have experience in assisting in-house teams to implement the GDPR. We have rendered opinions on the domestic data privacy and protection requirements and have also represented clients in landmark cases pertaining to the right to privacy, which in turn sparked the debate around need for data privacy and data protection laws in the country. We have advised multiple businesses on compliance with the applicable data privacy and protection laws, along with focus on delivery of handholding solutions for implementation of the privacy measures at an enterprise level.

• FINTECH

The Firm has worked with several start-ups as well as larger companies in navigating through the regulatory landscape of the FinTech sector in the country. As the sector is one of the most heavily regulated, and is a high-at-risk sector, the lawyers at the Firm have always believed in providing a handholding exercise to the clients, enabling them to implement the legal compliance requirements without any internal or external resistance.

• HEALTHCARE, PHARMACEUTICALS AND LIFE SCIENCES

Our healthcare, pharmaceuticals, and life sciences (HPLS) team advises across the practice areas like product development and brand protection, product liability and complex disputes, Drug Price Control, advertising and marketing, clinical trials, competition and trade, commercial agreements, data privacy, employment issues, and market entry. In addition to our substantive experience, our lawyers have diverse backgrounds – with employment histories ranging from government services to in-house industry positions. We provide our services, keeping reputational risk in mind.

We advise clients throughout a product’s life cycle to facilitate efficient research and development, and successful launch and commercialization, as well as to maximise the product’s franchise; this approach integrates regulatory and marketing strategies and patent and trademark protection. The Firm provides a full range of transactional and advisory services to pharmaceutical, biotechnology, medical device and agricultural companies in India and abroad. Our clients include many of the major national and multinational pharmaceutical companies as well as a wide array of biotechnology, diagnostic and medical device companies, ranging from start-up ventures to industry leaders.

Along with our Litigation, Regulatory and general advisory work, we assist pharmaceutical / medical device companies in their corporate transactional work ranging from taking them public; Mergers & Acquisitions; creation of licensing agreements; and from Employment related issues to Real Estate matters. Having worked with the NITI Aayog on the Telemedicine Practice Guidelines, 2020, and also leading the regulatory and policy conversations in relation to the Digital Healthcare and pharmaceutical sector, we are recognized as the go-to firm for issues that have arisen with the digital healthcare push by Government and industry alike. The attorneys at TMT Law Practice not only have extensive litigation experience in these areas but also have a keen understanding of the key requirements and concerns around clinical trials, liability, and insurance.

Our attorneys constantly engage with industry associations like Telemedicine Society of India, the Indian Society for Clinical Research, NASSCOM – LHIF, CII, FICCI in terms of realizing the industry goals and assist these associations in thought leadership and making formal representations to governmental and intergovernmental bodies, alike. Apart from this, our attorneys also assist not-for-profit organizations like Mohan Foundation, in matters related to end-of-life care, and organ transplantation.

• TELECOMMUNICATIONS

The dynamic Telecommunications sector and service providers therein, especially Telecom, Satellite, Commercial Space, In-Flight and Maritime Connectivity, VNO, and the like has made this sector one of the most challenging and demanding one. Our Telecom practice team endeavors to provide the most comprehensive coverage of the full range of issues in the sector. The team with its unique approach and understanding of the issues that lie at the intersection of technology, business, and the law, advise clients on a range of issues covering regulatory and commercial advice, legal and policy advice, negotiate transactions, contract compliance and approvals, dispute resolution etc. The Firm has worked with both domestic as well as overseas players in rendering advisory, support and handholding services specific to the nascent commercial space sector. The Firm has worked with international satellite operators and service providers, in advising them on their new service offerings, their negotiations with DTH service providers and other “consumers” of satellite services; and on making representations to the Directorate General of Civil Aviation, Ministry of Civil Aviation, Department of Telecommunications and Telecom Regulatory Authority of India with respect to permissions around in-flight and maritime connectivity, Spacecom Policy, Space Transportation Policy, Remote Sensing Policy, Geospatial Policy and the like.

The team has deep domain-expertise and has advised the entire spectrum of players in these fields – telecom service providers (voice, data, VPN and value-added services) and telecom and broadcast infrastructure entities (including satellites, cable, DTH, MSO, TV etc.); digital media companies, app-based communication services, online and video game developers. The team has significant experience in representing clients, in legal proceedings involving the Indian telecommunications regulator (TRAI) and appellate body, MEITY as well as the various state high courts and the Supreme Court of India on various telecom policy matters. The lawyers at the firm are regularly consulted on regulatory issues surrounding the edge of telecom and technology industry, including 5G, Orbital permissions, cloud infrastructure etc.

• Energy and Power

We advise our clients on issues relating to renewable energy including solar energy and wind energy. We advise our clients on joint venture, joint operation and maintenance agreements, opportunity exploration memorandum of understanding and related agreements. We also advise on regulatory and environmental compliance related to power and energy projects.

(i) Advising project developers, investors, and suppliers & contractors in the energy sector on diverse commercial / transactional issues and all aspects of licensing, market structures, competition, performance standards & tariffs;

(ii) Providing policy advice to governmental & regulatory authorities on issues like development of legal, regulatory & policy frameworks and promotion of Public – Private Partnership;

(iii) Advising on sustainable development issues like clean development mechanism & environmental compliances;

(iv) Handling resolution of disputes in various fora, including appellate tribunal, electricity regulatory commissions and courts and alternate dispute resolution processes

Our lawyers offer an array of services across a variety of Practice Areas, including:

• Corporate, Commercial, Secretarial and M&A

The Firm’s corporate and commercial team is unique in leveraging the experience of the Firm’s disputes resolution practice to offer practical advice and solutions. We have carved a niche in customizing our offering to suit the needs of different types of clients, including Family Offices, High Net Worth Individuals (HNIs), Medium and Small Enterprises (MSMEs), Start-ups, Limited Liability Partnerships (LLPs), and the like. Our M&A and PE practice has a proven track record of representing clients in investments (financial and strategic) and debt structuring, share and asset acquisition and disposal transactions. We have also effectively represented and assisted investees based out of India (including registered companies, NBFCs and corporate groups), receiving private equity investments in domestic or cross-border deals, with commercial solutions across a variety of industries including gaming, media, software, pharmaceuticals, e-commerce, fintech, education, insurance (including re-insurance companies) and infrastructure. Many of these transactions involved complex and novel structures and are multi-jurisdictional. We have also advised our clients (listed or unlisted, as applicable), with respect to setting up and structing business in India, legal and regulatory implications of the various applicable laws such as companies’ law, trust laws, foreign contributions, partnership and limited partnership matters and compliance under the SEBI takeover regulations and insider trading regulations. Working closely with specialists in the areas of finance, taxation and accounting enables us to add value to any transaction and effectively handle sophisticated transactions of different levels. Within a short span of time, the team has managed to successfully assist clients with negotiations, strategizing exit mechanisms, issues relating to winding up and repatriation of proceeds and drafting of other commercial and corporate documents and conducting due diligence exercises. We are consciously sensitive to the expectations and requirements of our diverse clientele, be it in a cross-border or a domestic deal.

• Intellectual Property

The intellectual property law practice at the Firm encompasses all facets of IP, i.e., patents, trademarks, copyright, designs, trade secrets, right of publicity; and the service offerings  include litigation, prosecution, advisory, enforcement and management of intellectual property rights. Notable matters/representations include, first and only case of fixation of music royalty under a compulsory and statutory licensing regime; first case on Standard Essential Patents; first John Doe order granted by the Courts in India with respect to piracy by cable operators and websites; first case of enforcement of right of publicity by a celebrity; Represent clients in the prosecution and management of IP portfolios in India and overseas. Assist companies in strategizing around transfer of IP from one entity to another, while ensuring the tax structure and benefits inuring in favor of the company remains intact. Assist multinational corporations in structuring, negotiating, and effecting their cross-border IP transmission agreements, with focus on services related to technical know-how, consultancy services and related.

• Dispute Resolution / Arbitration

The Firm’s USP is its dispute resolution practice and specifically, the experience of the lawyers in presenting cases themselves with minimum reliance on Senior Advocates. Our lawyers have experience in a diverse array of subject matters, and yet, have been recognized as leading practitioners in areas of commercial contract and corporate litigation, regulatory litigation, intellectual property, energy, media and entertainment, broadcasting and insolvency. The firm has represented clients in different fora, including the Supreme Court of India and the High Courts across the country, as also various Tribunals, such as the Competition Commission of India, the National Company Law Tribunal and Appellate Tribunal (which now holds additional charge of the Competition Appellate Tribunal), the Telecom Disputes Settlement and Appellate Tribunal, the Intellectual Property Appellate Board, the Appellate Tribunal for Electricity, the National Consumer Disputes Redressal Commission, etc. The firm has extensive experience in appearing for litigations of complex nature and its lawyers have handled various high-profile litigations before different fora across the country.

The Firm is also known for its services in the Alternate Dispute Resolution arena across wide variety of subject-agnostic commercial disputes. During this past year, the firm has: Successfully represented one of India’s leading hotel aggregators in an arbitral award whose value is USD 630 Million. Successfully represented a leading broadcaster in an international commercial arbitration at LCIA for the non-payment of license fee under a cross-border Channel License and Distribution Agreement.  Represented a leading bulk messaging aggregation service provider on a dispute pertaining to recovery of dues. Represented a leading sports franchise owner on a determination of admissibility of an arbitration clause in an inadequately stamped agreement in a dispute with a sponsor.

• Insolvency and Bankruptcy

Our expertise in the banking sector ranges from recovery actions for banks and financial institutions to legal management, restructuring, and reorganization of banking assets and NPAs under the ambit and purview of all extant laws of the country including policies pertaining to the restructuring of non-performing assets including constitution and formation of JLFs. In the process, we have acquired an in-depth knowledge and understanding of the banking sector, the markets, and their legal and regulatory frameworks. The Firm’s proficiency in the insurance sector extends to regular coordination with the sector regulator, IRDA, in matters of licenses and major legal compliances for and on behalf of leading insurance companies.

(i) Representing and assisting major foreign as well as Indian banks in corporate lending sector, SMEs as well as the large enterprise sector in recovery proceedings before all applicable and necessary forums, including the High Courts and the Supreme Court of India as well as in other criminal/civil matters pertaining to and arising out of such recovery proceedings.

(ii) Advised and rendered legal opinions on regulatory issues.

(iii) Represented clients in proceedings under the Insolvency and Bankruptcy Code, 2016 simultaneous with or in alternate to (i) recovery proceedings, and (ii) constitution of JLF as well as other restructuring mechanisms under extant RBI guidelines.

(iv) Rendered advisory opinions pertaining to restructuring/reorganizing NPAs for the banks/financial institutions and their onward sale to ARCs or other financial institutions.

• White Collar Crime

The White Collar Crime Practice of the Firm includes not only representation and advice in relation to matters that are initiated or pending before Courts of law or Tribunals, but also representation before investigation authorities such as the Enforcement Directorate, Serious Frauds Investigation Office, Economic Offences Wings of the various States, etc. Our lawyers have experience in advising on matters related to the Prevention of Money Laundering Act, Prevention of Corruption Act, Negotiable Instruments Act, Prevention of Food Adulteration Act, the Official Secrets Act, penal provisions of economic legislations such as Companies Act, Customs Act, GST Act, Public Gambling Act, Prize Competition Act, Information Technology Act, and the like;

• Public Policy & Regulatory Affairs

The political, regulatory, and legal landscape across the globe is posing several challenges to the businesses. We engage with clients closely to understand their business and the specific compliance requirements. It is no longer a ‘free’ world in the true sense if the word. Whether it is protectionism, terrorist threat, commerce, or plain vanilla demonstration of authority, we are now living in an increasingly Regulated world. Inherent in the decision to regulate is also the decision to forbear. In such an environment, we have, over the last 4-5 years, witnessed a sudden spurt in exercise of regulatory powers by the different departments of the Government. The TRAI, DOT, SEBI, DIPP, RBI, MIB, MeITY – have all been busy and have kept the businesses and the citizens equally engaged, both in a participative manner during the consultation process, as also as the beneficiary of the direct consequences of such regulation forbearance. TMT Law Practice is strategically positioned – both geographically (headquartered in the Capital – the nerve center of all policy-regulatory activity), as well as by virtue of having handled advisory as well as litigation work in the regulatory space, across sectors-ministries. Our lawyers are principal advisors to leading Think Tanks, and are often called upon to offer expert advice on matters of current importance by periodicals and the electronic media and have been on committees and working groups that have advised / offered assistance to government departments on critical and cutting-edge issues. 

• Mining

Our team of lawyers have extensive experience in providing legal services and advice to clients within the mining and energy industries. Our lawyers have a wealth of experience in energy and mining areas and have not only practiced relevant legal services, but also have extensive business experience in these areas, enabling us to provide clients with practical business-orientated solutions.

We have undertaken mandates related to litigation and arbitration. The Firm has advised on several mining litigation in relation to tender of long-term lease of minor minerals, as well as breach of compliances with respect to mining leases. We have also represented local NGOs fighting for illegal mining within Eco-sensitive zone of wildlife sanctuaries before the High Court of Odisha. Our resource persons have also been involved in capacity building of different stakeholders in the domain of environment laws and study.

• Competition & Antitrust

The firm has engaged in various matters in the domain of Competition Law since the Competition Act, 2002 came into effect in 2009. We have advised clients on a variety of matters and provided services that have included filing Information/Complaints before the Competition Commission of India (“CCI”), contesting Information/Complaints at the prima facie stage and final stages. We have also assisted clients during the process of investigation before the Director-General, CCI (“DG”). The Firm has also been engaged by clients in the appellate process where we have either appealed against orders passed by the Competition Appellate Tribunal or have defended CCI orders before the Competition Appellate Tribunal or the High Court and the Supreme Court of India. Our lawyers have also advised the CCI as also the office of the DG, on issues of ongoing and current importance to assist with the investigation and / or determination of market dominance. We regularly advise clients on opinions to review agreements/actions from the perspective of compliance of the terms of the Competition Act, 2002, including on issues such as abuse of dominance in the electronics business, broadcasting industry, digital gaming, digital health, sports business, etc.

Spotlights

TMT

The Firm’s practice combines an interdisciplinary team of litigators and transactional attorneys advising some of India’s most prominent media, entertainment, and communications companies and individuals. We represent clients across the entire spectrum of the media and entertainment industry, including television, films, radio, music, print and publications, events, fashion, arts, OTT platforms, etc. Sports is a sunrise sector, where our lawyers have been at the forefront of delivering solutions that are legally sound and commercially feasible with respect to governing bodies, sports federations, league owners, sports management companies, sportspersons, broadcasters, and, specialist dispute resolution mechanism.

 

Press Releases

Session 2A: Web 3.0 – Regulating a Decentralized Internet

11th January 2023 ITechLaw Association

TMT Law Practice successfully represented YashRaj Film

16th May 2022 TMT Law Practice successfully represented YashRaj Film ( A Film Production House) in denying the relief to a Writ Petitioner in a Public Interest Litigation which sought deletion of a scene from their upcoming movie “Jayeshbhai Jordaar”.

TMT Law Practice represents India’s largest vernacular Gaming platform, WinZo, in Series C funding round where the company raised USD 65 Million from Griffin Gaming Partners

12th July 2021

The Underdog Story!

Today we announce $65MM Series C financing led by Griffin Gaming Partners. It's a remarkable feat as our business turns well capitalized to fuel our growth ambitions. With so much capital getting deployed over the last couple of months in the ecosystem, it must be quite bewildering for many to get their head around what it really takes for teams to make the cut.

Legal Developments

COMMISSIONED WORKS: BALANCING THE RIGHTS OF PRODUCERS AND AUTHORS

3rd October 2023 “Do I own any rights in the works I create?”, “Who owns the copyright in the underlying works of a film?” - These are a few questions that cross any author’s mind when they author/create works. The Hon’ble Delhi High Court in RDB and Co.HUF vs Harper Collins Publishers India Private Limited[1] has considered these questions.

TATA SIA AIRLINES PRIVATE LIMITED v. THE UNION OF INDIA: WELL-KNOWN TRADE MARKS

18th September 2023 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.

2. 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.

3. 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.

2. 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.

3. 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. 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.

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Author: Ms. Aishwarya Ambardekar, Associate, TMT Law Practice.

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Footnotes

[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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Introduction:

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