Author: Intern - Ananya Yadav
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…”
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