In the matter of Tata SIA Airlines Limited v. Union of India[W.P. (C) – IPD 64/2021 & CM APPL. 47831/2019 and 10/2022], Single Judge of the High Court of Delhi [Jyoti Singh, J.], by judgement dated May 25, 2023, dismissed the writ petition and held that a trademark determined by a Court to be well-known will need to be filed through prescribed procedure under Rule 124 of the Trade Marks Rules, 2017 ( ‘2017 Rules’) for registration as a well-known trademark.

Section 11(8) of the Trade Marks Act, 1999 (‘the Act’) states that “Where a trademark has been determined to be well known …by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration…”. Rule 124 states “ (1) Any person may, on an application…,request the Registrar for determination of a trademark as well-known…”. The question that arises is, whether a trademark which has been determined by a Court to be well-known will need to follow the prescribed procedure under the 2017 Rules for seeking registration?

The Petitioner, Tata SIA Airlines Limited, filed a writ petition seeking inclusion of the mark VISTARA in the list of Well-Known Trademarks maintained by the Trade Marks Registry. The Petitioner submitted that, it had requested the Registrar of Trade Marks (‘the Registrar’) to include VISTARA to the list on the basis of a decree of the Delhi High Court declaring VISTARA as a well-known trademark, and this was refused to be acted upon by the Registrar. The Petitioner contended that the Act provides for two different and distinct authorities to determine a trademark to be well-known, viz. the Registrar and the Court, and that the procedure laid down under 2017 Rules only applies in instances where the determination is made by the Registrar. The Respondent, on the other hand, argued that as per the 2017 Rules, any request filed without the prescribed fee and procedure, shall be deemed not to have been filed at all, and even where the determination has been made by a Court, requisite application is required to be filed under the 2017 Rules.

The Court held that “there is no conflict between the provisions…and Rule 124 is an enabling provision for enforcing and giving effect to Section 11(8) after the trademark has been declared to be well-known by a judicial order…It is thus held that even where a trademark is declared to be a well-known trademark by the Court, Rule 124 will apply with respect to the procedure for publication and inclusion…”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of RDB and Co. HUF v. HarperCollins Publishers India Private Limited [CS (COMM) 246/2021] Single Judge [Hari Shankar, J.] of the High Court of Delhi vide judgement dated May 23, 2023, ruling in favour of the Defendant in a copyright infringement suit, held that screenplay of a film is a separate literary work.

Section 13(4) in the Copyright Act, 1957 states “(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any work in respect of which ora substantial part of which, the film, or, as the case may be, the sound recording is made” [Empasis supplied]. The question considered by the Court was, whether a screenplay of a film can enjoy copyright as a separate work in respect of which a film is made, de hors the copyright held in the film?

The Plaintiff-HUF submitted that the Producer, R.D. Bansal (the Karta of the Plaintiff-HUF), had commissioned Satyajit Raj to write the screenplay of and direct the film ‘Nayak’. The Plaintiff contended that the risk of commercial failure of the film was taken by the Producer to assert that the Producer was the first owner of all direct, indirect, derivative and related rights with respect to the film. The Plaintiff argued that the Defendant’s novelization of the screenplay, upon receiving a license from the heir of Satyajit Ray’s estate, would amount to infringement of the Plaintiff’s copyright. The Defendant, on the other hand, argued that the script and screenplay in respect of which the film was made, is a separate work distinct from the film- the rights of which are owned by Satyajit Ray. The Defendant argued that the Producer, therefore, has no copyright over the underlying works. It was further submitted that the right to novelize the underlying work in a film is a right which is independent of the copyright held in the film itself.

The Court affirmed the arguments placed by the Defendant and held that the copyright over the cinematographic work does not extend to the separate copyright which exists in the screenplay of the film. The Court observed that “Given the ambit of…“literary work”…the screenplay of the film Nayak is unquestionably a “literary work”… Per sequitur, by operation of Section 13(4), the copyright in the screenplay, as a “literary work”…cannot be affected by the separate copyright in the cinematograph film itself…”

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In the matter of Abu Dhabi Global Market vs The Registrar Of Trademarks [C.A.(COMM.IPD-TM) 10/2023], Single Judge [C. HARI SHANKAR, J.] of the High Court of Delhi, via judgment dated May 18, 2023, set aside an order passed by the Assistant Registrar of Trade Marks which rejected the Appellant’s trade mark application for a device mark consisting of the words “ABU DHABI GLOBAL MARKET”. The application was rejected on the grounds that the impugned application was not coined or invented but rather included a geographical name. The Court held that inventiveness was not a pre-requisite for registration and that a mark could not be refused for registration on the ground that it was not coined or inventive.

Section 9(1)(a) of the Trade Marks Act, 1999 states that “The trade marks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person may not be registered.”. The question that arises is whether inventiveness of a trade mark is a criterion of distinctive character?

While refusing the Application (No. 3184380), one of the grounds stated by the Registrar of Trade Marks (“Respondent”) was that the mark was as a whole non-distinctive as it was neither coined nor invented.  With respect to this finding, the Appellant pointed out that the trade name “ABU DHABI GLOBAL MARKET” of the Appellant has been adopted by the Appellant as specifically prescribed under the Federal Laws of United Arab Emirates (UAE). The Appellant also submitted that the device mark was already registered in favour of the Appellants and the mark cannot lose its distinctiveness by mere addition of the words “ABU DHABI GLOBAL MARKET”.

The Appellate Court observed that it does find any requirement for a mark to be “coined” or “inventive” for it to be eligible for registration.It was held that “Distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not”. The Delhi High Court thereby set aside the Assistant Registrar’s order rejecting the trademark application and remanded it to the office of the Registrar of Trade Marks for advertisement and further proceedings.

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In the matter of, Dhiraj Kumar Nanda v. The Registrar Of Trade Mark & Anr.  [C.A.(COMM.IPD-TM) 7/2023], a single judge [Justice Prathiba M. Singh] of the High Court of Delhi, vide order dated July 3, 2023, affirmed that placing the notice of the website is not sufficient and notice should be communicated to the parties in writing.

Rule 50(1) of the Trade Marks Rules, 2017 (‘Rules’) states that “(1) The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice.” The nature in which the registrar shall ‘give notice’ of hearing to respective parties is not certain.

The Appellant’s application for the mark NUTRILIFE in Class 5 was ordered abandoned vide TM Office’s order dated September 23, 2022, in an opposition proceeding. During the course of the opposition proceeding, two hearings were scheduled in the year 2022. The Appellant filed the present appeal against the abandonment order, contesting that it did not receive any hearing notices in the matter and thus could not defend its position for its trademark.

The Respondent submitted that the hearing notice was received by the Opponent. However, it was not disputed that the hearing notice was not issued to the Appellant.

The court placed reliance on the judgement in Institute of Cost Accountants v. Registrar of Trade Marks 2013 SCC OnLine Bom 362 stating that, “The respondent was bound to communicate any objection or proposal in writing to the applicant.…placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis”. The Court while allowing the appeal held that, “…As per the settled legal position, the Registrar is required to give notice to the parties, of the opposition hearing…the impugned order abandoning the application is set aside. A fresh date of hearing shall be communicated by the Registrar of Trademarks to the parties, on which the date the matter shall be heard and orders shall be passed in the opposition in accordance with law….”

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In the matter of Kamdhenu Ltd. v The Registrar of Trademarks [C.A.(COMM.IPD-TM) 66/2021], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, vide judgment dated July 6, 2023, allowed an appeal against the refusal order of the Registrar of Trademarks and held that documentary evidence without an affidavit can establish the well-known status of the mark, as long as there is sufficient evidence.

Rule 124(1) of Trademarks Rules, 2017 (‘Rules’) states “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.” The question that arises is whether the relevant ‘evidence and documents’ in support of the claim for well-known status are required to be filed on an affidavit.

The Appellant contended that it is not mandatory to file the evidence only by way of an affidavit under Rule 124. The Appellant also relied upon other trade mark rules and contended that whenever the evidence is required to be placed on an affidavit, the provision of Trademarks Act, 1999 or Trade Mark Rules, 2017 specifically states so.

The Respondent submitted that given the nature of the evidence required, it is implicit that the same must filed by way of an affidavit, and the non-filing of an affidavit would in effect mean that the same cannot be considered by the Registrar.

The Court observed that “Rule 124 of the 2017 Rules uses the word “evidence and documents”. The same could also include affidavits by way of evidence and other documents. However, it cannot be held that an affidavit would be mandatory so long as there is sufficient evidence. …”.  Allowing the appeal, the court opined that “...in order for a determination of well-known status of a trademark, affidavit by way of evidence cannot be held to be a mandatory requirement for grant of well- known status under the 1999 Act and the 2017 Rules. However, documentary evidence would be required…”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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