March 2 Hearing on Well-Known Marks in India; Association Weighs In

The High Court of Delhi will hold a hearing on March 2 to decide whether the Trade Marks Registry should add a mark to its List of Well-Known Marks once a court has declared it as well known. INTA had filed an amicus brief in the case, arguing that the mark should be included.

The Asia-Pacific Subcommittee of the International Amicus Committee previously filed an amicus curiae brief with the High Court of Delhi, India, in TATA SIA Airlines Limited v. Union of India, WP (C) 11642 (2019). The company is seeking to place its mark VISTARA on the well-known list.

Background

The High Court of Delhi through its order dated August 5, 2019, in the case of Tata SIA Airlines Limited v. M/s. Pilot Aviation Book Store & Ors. [CS (Comm.) 156/2019] observed that the petitioner’s mark VISTARA is a well-known mark. TATA SIA Airlines Limited (petitioner) thereafter approached the Trade Marks Registry (respondent) for inclusion of the VISTARA mark in the list of well-known marks maintained by the Trade Marks Registry. The Registry, however, asked the petitioner to file a request on the statutory Form TM-M for inclusion to the list, under Rule 124 of the Trade Marks Rules, 2017, along with the official fee of INR 100,000 (approximately US $1,400).

The petitioner then filed a writ petition before the High Court seeking to order the respondent to include VISTARA in the list of well-known marks. The petitioner argued that once a court in India has determined the mark to be well known under Section 11(8) of the Trade Marks Act, there is no need to file a request on Form TM-M and to pay the official fee for such determination. The petitioner further contended that in such cases, the declaration by the Registrar of Trade Marks is merely an administrative formality.

The respondent argued that filing of the statutory Form TM-M and the payment of the official fee is mandatory for a mark to be included in the list of well-known marks. Accordingly, the High Court framed the issue as “… whether once a Court has determined a Trade Mark to be well known, the procedure stipulated under Rule 124 of the Trade Mark Rules, 2017, would have to be followed, including the payment of fees of Rs. 1 lakh [US $1,400], in order to get the Trade Mark included in the list of well-known Trade Marks published by the Trade Mark Registry.”

To assist with resolution of this issue, the Court, in an order dated February 24, 2020, invited INTA to serve as an amicus in this case.

INTA’s Brief

INTA submitted a brief on July 3, 2020, in favor of the plaintiff, stating that once a court has determined a trademark to be well known, the procedure stipulated under Rule 124 of the Trade Mark Rules, 2017, that is, filing of an application for determination and payment of requisite fees, is not required to be followed in order to have a trademark included in the Trade Marks Registry’s List of Well-Known Trademarks.

INTA’s key arguments are:

1. Section 11(8) of the Trade Marks Act, 2002, expressly states that once a 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 the mark to be well known for inclusion in the list of well-known marks. The provision is without condition or limitation. Further, the presence of the word “shall” makes it abundantly clear that the registrar is obliged to include the mark in the list of well-known marks.
2. The language of Rule 124 indicates that it applies in cases where a mark is to be declared well known by the Trade Marks Registry. It states that any person may request the registrar to make a determination of a trademark as a well-known mark. Section 11(8), meanwhile, states that once a court has made the determination, the registrar shall consider the mark as well known. This indicates that Rule 124 does not encompass situations in which a court has already made a declaration. In other words, the statute vests the power to declare a mark as well known to two distinct authorities, and that power is not contradictory.
3. The respondent included 84 marks in the list of well-known marks prior to introduction of Rule 124 in the Trade Marks Rules, 2016. Among them, 80 marks were determined to be well known by the Indian courts or the Intellectual Property Appellate Board and hence were added to the list. Therefore, it is evident that prior to enactment of the Rule 124, the respondent considered marks as well known as determined by competent authorities other than itself (in compliance with Section 11(8) of the Act) and included the same in its list of well-known marks.

INTA argues that once a court has determined a mark to be well known, it is unreasonable for the stakeholders to file a detailed application under Rule 124 along with a significant fee. The stakeholders should not have to go through an “onerous process” for a mere ministerial act of inclusion in the list. Further, if the Trade Marks Registry is allowed to adjudicate on an issue which has already been decided by a court, there would be a chance of conflicting decisions. It also would effectively render the court’s statutory authority subordinate to that of the Trade Marks Registry.

Three members of the Asia-Pacific Amicus Subcommittee of the International Amicus Committee drafted and put their signatures on the brief. They are Subcommittee Chair Vaibhav Vutts (Vutts & Associates LLP, Advocates, India) and members Gaurav Bhalla (ALG India Law Offices LLP, India) and Pooja Dodd (Dodd & Co., India).

INTA’s amicus curiae brief represents a collaboration. The India Subcommittee of the Trademark Office Practices Committee and the Asia-Pacific Subcommittee of the Famous and Well-Known Marks provided invaluable support.

Read INTA’s amicus brief.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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