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September 11, 2023

Court Case Bulletin (CCB): Trademark Determined By A Court To be Well-Known Will Need To Be Filed Through Prescribed Procedure For Registration 

Author: Anurathna Mathivanan

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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