Till the New Rules, the only way for a proprietor of a trademark to include its mark in the list of well-known marks was on the basis of the orders of Court/Registrar/IPAB Until the Trade Marks Rules, 2017 (New Rules), the Registrar of Trade Marks (Registrar) would consider including a mark in the list of well-known marks under Section 11(8) of the Trade Marks Act, 1999 (Act). Thus, until...
Till the New Rules, the only way for a proprietor of a trademark to include its mark in the list of well-known marks was on the basis of the orders of Court/Registrar/IPAB
Until the Trade Marks Rules, 2017 (New Rules), the Registrar of Trade Marks (Registrar) would consider including a mark in the list of well-known marks under Section 11(8) of the Trade Marks Act, 1999 (Act). Thus, until the New Rules, the only way for a proprietor of a trademark to include its mark in the list of well-known marks maintained by the Registrar was on the basis of a decision passed by an authority like the Indian Court or Registrar or the Intellectual Property Appellate Board (IPAB) determining its trademark as a well-known mark.
The New Rules provide a mode of inclusion of a mark in the list of well-known marks. Under the New Rules, an application for determination of a mark as a well-known mark can be filed by a proprietor without waiting for a decision from one of the above-mentioned authorities. Under Rule 124 of the New Rules, a proprietor can file an application for determination of its trademark as a well-known mark supported by various documents listed as per the guidelines issued by the Controller General of Patents, Design and Trade Marks along with the payment of prescribed fees. Incidentally, while the New Rules require filing of such prescribed application in spite of a mark being determined as a well-known mark by a Court/Registrar/ IPAB, there is no provision limiting the power of the Court to determine a mark as a well-known mark. At this juncture, the following decisions of the Delhi High Court add to the enigma on rights of the Court to determine a mark as wellknown.
In Verizon Trademark Services LLC. and Ors. v. Mr. Parth Solanki and Anr. (CS(COMM) 1434/2016 & I.A. 13032/2016) (Verizon Decision), the Court fell short of declaring the 'VERIZON' trademark as well-known since it was not a contested matter. In this case, Verizon had sought permanent injunction against the use of tradename Varizon Tech and/or Varizon Technologies, the domain name www.varizontech.com, or any other trademark and name which were either identical with or deceptively similar to the well-known 'VERIZON' trademarks, logos, and name. Verizon had also sought for declaration of its 'VERIZON' trademarks as well-known trademarks. The Court had previously through its order dated October 21, 2016 granted an ex-parte injunction in favor of Verizon. Since the defendants were not represented in spite of notice being served, the matter proceeded ex-parte. Interestingly, the Court held that on a prima facie basis, 'VERIZON' trademarks did satisfy the requisite criteria for a well-known mark as per the provisions of the Act. However, the Court refrained from such declaration only because the defendants did not contest the matter.
Just six days after the Verizon decision, in the case of Samsung Electronics Company Ltd. and Anr. v. M/s. D.R. Radio Corporation and Ors. (CS(COMM) 148/2017 & I.As. 3483/2015 & 12144/2015), which was again an uncontested matter, the same single Judge of the Court while determining the issue of declaration of trademarks/logos of 'SAMSUNG' and the Samsung's oval device as wellknown held that Samsung cannot circumvent the procedure prescribed under Rule 124 of the New Rules with respect to determination of a trademark as a well-known mark. The Court again clarified that had the defendants contested the matter, they would have passed a reasoned order regarding the maintainability of Samsung's claim of a well-known mark. This judgment is on the same lines as the Verizon decision.
Again, on November 22, 2017, the same single Judge of the Court in the case of TATA Sons Limited and Anr. v. Mr. Charanjeet Shah and Ors. (CS(COMM) 1434/2016 & I.A. 13032/2016) (TATA Decision), while deciding on the claim of well-known status of the mark 'TCS', held that in order to ascertain the status of a well-known mark in respect of a trademark, the appropriate recourse would be to resort to the procedure prescribed under Rule 124 of the New Rules and file the requisite application before the Registrar. The Court opined that the procedure prescribed under Rule 124 needs to be availed of by parties who claim the status of a well-known mark. Accordingly, the Court directed Tata Sons to file an appropriate application under Rule 124 within a period of two weeks and also directed the Registrar to decide the same as expeditiously as possible, preferably within a period of three months. From the reading of this decision, it appears that the procedure prescribed under Rule 124 needs to be availed for claiming the status of a well-known mark.
However, in a complete turn of events, in the Christian Louboutin SAS v. Mr. Pawan Kumar & Ors. (CS(COMM) 714/2016) in an infringement, passing off, and declaratory suit, the same Court (although a different judge) held merely on the basis of the evidence filed in the suit that the 'RED SOLE' trademarks of Christian Louboutin SAS (Louboutin) have acquired well-known character and declared the same to be well-known marks. Previously, on June 2, 2016, the Court had granted ex parte interim injunction against the defendants and issued summons. Few defendants did file their written statements. However, none of the defendants entered appearance in spite of notice, and hence, the matter proceeded ex-parte.
The Court relied on the following in determining 'RED SOLE' as a well-known mark: (i) Louboutin's status as a wellknown luxury brand in over 60 countries; (ii) extensive and continuous use of the 'RED SOLE' trademarks since 1992; (iii) knowledge of Indian customers of the 'RED SOLE' trademarks; (iv) Louboutin's status as the sole licensor of the 'RED SOLE' trademarks and several successful enforcement actions in the past; (v) extensive promotion of the 'RED SOLE' trademarks in India; (vi) Louboutin's extensive Internet presence; (vii) the accessibility of Louboutin's website in India and its role in making Indians aware of 'RED SOLE' trademarks and products; and (viii) awards and accolades received by Louboutin for products sold under the 'RED SOLE' trademarks. Interestingly, there was no mention or reliance on Rule 124 by the Court, and although this was an uncontested matter, the Court went ahead and declared the mark as well-known based on the evidence filed by Louboutin.
From the review of the above catena of decisions, it appears that the Court itself has taken different views on a similar situation. Further, the TATA Decision complicates the situation further by providing that in order to ascertain the status of a well-known mark in respect of a trademark, the appropriate recourse would be to resort to the procedure prescribed under Rule 124 of the New Rules and file the requisite application before the Registrar.
In our view, Rule 124 does not per se curtail the power of the Courts to determine whether a trademark qualifies to be a well-known mark or not. Additionally, Section 11(8) obligates the Registrar to register a trademark as a wellknown mark if the same has been determined by any Indian Court or Registrar or IPAB. This also lends support to the argument that Rule 124 simply provides for an additional method to determination of a well-known mark, i.e., a voluntary/proactive method for a trademark proprietor (rather than the circuitous route of Courts/IPAB/Registrar through contentious matters) irrespective of any decision of a Court or Registrar or IPAB granting well-known status to a trademark. True effect of Rule 124 will have to be tested with time.
Disclaimer – The views expressed in this article are the personal views of the authors and are purely informative in nature.