Determining Well-Known Trademarks: Kamdhenu Ltd. v. The Registrar of Trade Marks

Case Citation: C.A.(COMM.IPD-TM) 66/2021

Court: High Court of Delhi at New Delhi

Date of Decision: 6th July, 2023

Introduction:

This case involves an appeal filed by Kamdhenu Ltd. against the order of the Registrar of Trade Marks rejecting their application to include the trademark “KAMDHENU” in the List of Well-Known Trademarks. The appellant argues that the Registrar’s rejection was based on incorrect grounds, primarily due to the non-filing of an affidavit as evidence. The appellant contends that the filing of supporting documents should suffice and that the Registrar erred in their decision.

Procedural History:

• The appellant initially appealed to the Intellectual Property Appellate Board (IPAB) in 2019.
• Due to the abolition of the IPAB and the enactment of the Tribunal Reforms Act in 2021, the appeal was transferred to the High Court of Delhi.

Issue Presented:

Whether the Registrar’s rejection of the application for inclusion of the trademark “KAMDHENU” in the List of Well-Known Trademarks was justified based on the non-filing of an affidavit as evidence.

Rules of Law:

• Section 91(1) of the Trade Marks Act, 1999: Provides the provision for filing an appeal against an order of the Registrar.
• Rule 124 of the Trade Mark Rules, 2017: Pertains to the inclusion of well-known trademarks and the evidence required for such inclusion.
• Indian Evidence Act, 1872: Defines evidence and clarifies that affidavits alone do not constitute evidence.
• Section 129 of the Trade Marks Act, 1999: Deals with evidence before the Registrar, specifying that evidence is generally given by affidavit, but oral evidence may also be accepted at the Registrar’s discretion.

Analysis and Reasoning:

In this case, the court examines the provisions of the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, specifically focusing on the determination of well-known trademarks. The court begins by providing a historical background on trademarks and their registration in relation to specific goods. It highlights the need to extend trademark rights to goods and services that are similar or related to the registered goods, as well as to protect trademarks with a significant reputation and goodwill.

The court discusses the introduction of the concept of well-known trademarks in the 1999 Act and defines a well-known trademark as a mark that has gained substantial recognition among the public using the goods or services associated with the mark. The court further examines the factors to be considered in determining a well-known trademark, as outlined in Section 11(6) and (7) of the 1999 Act. These factors include the knowledge and recognition of the mark, the duration and extent of use and promotion, and the record of successful enforcement of rights in the mark.

Additionally, the court addresses Rule 124 of the 2017 Rules, which provides the procedure for determining a well-known trademark by the Registrar. The court clarifies that Rule 124 does not differentiate between a well-known trademark determined by the court or by the Registrar, and the procedures for both scenarios are the same. The court emphasizes that the purpose of Rule 124 is to streamline the procedure and bring uniformity in declaring well-known trademarks.

The court highlights the importance of documentary evidence in establishing the well-known status of a trademark. It provides a list of possible documents that may be submitted as evidence, including invoices, promotion and advertising materials, records of successful enforcement, market surveys, and financial documents. The court also clarifies that while an affidavit can be submitted as evidence, it is not mandatory, and documentary evidence alone can be sufficient.

Holding and Decision:

The court holds that an affidavit by way of evidence is not mandatory for determining the well-known status of a trademark under the 1999 Act and the 2017 Rules. It states that documentary evidence is required, and if the Registrar deems it necessary, an affidavit may be requested. The court allows the appellant to file a supporting affidavit and additional documents within eight weeks and instructs the Registrar to afford a hearing and decide the application based on the law.

Implications and Significance:

This decision clarifies the requirements for determining well-known trademarks under the Trade Marks Act, 1999. It emphasizes the importance of documentary evidence in establishing the well-known status of a trademark and provides guidance on the types of documents that may be submitted. The decision also ensures consistency and uniformity in the procedure for determining well-known trademarks, regardless of whether the determination is made by the court or the Registrar.

The ruling has significant implications for trademark owners seeking well-known status for their marks. It underscores the need to gather and present comprehensive documentary evidence to support their claims. The decision also clarifies that the absence of an affidavit should not result in the dismissal of an application, as long as the documentary evidence is sufficient.

Critique and Commentary:

This case analysis acknowledges the court’s clear and comprehensive interpretation of the provisions relating to well-known trademarks under the Trade Marks Act, 1999. The court’s reasoning is logical and consistent with the intention of the legislation, promoting uniformity and streamlining the procedure for determining well-known trademarks.

The court’s decision to allow the appellant an opportunity to file a supporting affidavit and additional documents demonstrates a fair approach, ensuring the parties have a chance to present their case fully. The court’s clarification regarding the non-mandatory nature of affidavits for evidence is also commendable, as it provides flexibility while maintaining the requirement for substantial documentary evidence.

In terms of alternative approaches, one could argue that the court could have provided more specific guidelines on the weight and relevance of different types of documentary evidence. Additionally, the court could have discussed the potential implications of this decision on the burden of proof for establishing well-known trademarks.

Overall, this case analysis appreciates the court’s thorough analysis, which provides clarity on the determination of well-known trademarks and sets a precedent for future cases in the jurisdiction.

Conclusion:

In conclusion, the court’s holding in this case clarifies that an affidavit by way of evidence is not mandatory for determining the well-known status of a trademark. The court emphasizes the importance of documentary evidence and provides guidance on the types of documents that may be submitted. The decision ensures consistency and uniformity in the procedure for determining well-known trademarks. This ruling has significant implications for trademark owners seeking well-known status and promotes a fair and flexible approach to evidence requirements.

Ratio of the case:

An affidavit is not mandatory for determining the well-known status of a trademark; documentary evidence alone can suffice.