Rule 124 of Trademark Rules, 2017 shall apply with requisite form and fee even where a mark is declared as a well-known trademark: Delhi HC
While hearing a petition by TATA Sia Airlines with respect to the publication of VISTARA® in the list of Well-Known Trademark, the Delhi High Court clarified that even where there is a declaration of a Well-Known Trademark, publication of the same in the list shall be done as per Rule 124 of the 2017 Rules, and there is no conflict or ambiguity between Section 11(8) and Rule 124 as such.
The Delhi High Court in its recent judgment held that there is no ambiguity in the procedure that Registrar of a Trademark shall follow for the rule for including a Well-Known Trademark in the list of Well-Known Trademarks, in a case where it stands determined and declared as a Well-Known mark by a competent court or tribunal.
The Court was hearing a petition by TATA Sia Airlines Limited, subsequent to the declaration of the mark VISTARA® as a Well-Known Trademark vide judgment dated 05.08.2019.
Justice Jyoti Singh, while dismissing the petition, held, “Legislature while enacting Section 11(8) has proscribed the Registrar from re-determining a trademark already declared as well-known by a Court/Registrar and does not deal with the procedure or mechanism for determination or publication or inclusion of the trademark, which is separately provided for in Rule 124 read with the Schedules. 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, save and except, calling for documents and inviting objections under sub-Rules (4) and (5) thereof.”
The brief issue before the court was whether the petitioner could be compelled to comply with Rule 124 once the court had declared the mark to be a Well-Known Trademark and whether, in such a case, the request for inclusion of the mark in the list of Well-Known Trademarks should necessarily be made on Form TM-M along with the prescribed fee.
Moreover, the court considered whether there is any contradiction between Rule 124 and Section 11(8) of the Act.
“The interpretation is fortified by reading the entire scheme of the 2017 Rules along with the First and Second Schedules thereto. In Rule 11(1), the word used is ‘shall’ and the mandate is that the Forms set forth in the Second and Third Schedules shall be used in all cases, to which they are applicable. The second Schedule relates to ‘Forms’ and against TM-M in Column-2 under the heading ‘Section and Rules of the Act & Rules’, Rule 124 is mentioned. Column-3 deals with ‘Title for which form may be used’ under which there is a clear reference to ‘Request to inclusion of a mark in List of well-known trademarks’. Therefore, when Column-3 is read with Rule 11, the inescapable conclusion is that even for a request to include a trademark in the List of Well-Known Trademarks, Form TM-M is mandatory”, Court further added answering the issue on filing of form TM-M in affirmative.
With respect to the payment of fee, court observed that Rs. 1,00,000 is prescribed not just for determination of trademark but for inclusion of the same in the list as well and, non-payment or insufficient payment shall be deemed as non-filing of the documents followed by consequences stipulated under the Rules of 2017.
“This Court, therefore, cannot read or interpret the provisions of Rule 124 in the manner Petitioner reads it so to hold that fee is required to be deposited only when an application is made under Rule 124(1) for determination of a trademark as a well-known trademark by the Registrar”, Court said.
Brief Background
Tata Sia Airlines instituted the present petition seeking direction in the nature of mandamus to the respondent Union of India, for consideration of the letter dated 23.08.2019, through which they sought inclusion of the Trademark VISTARA® in the list of Well-Known Trademarks.
On 25.03.2019, the petitioner filed a suit titled TATA Sia Airlines v. M/s Pilot Aviation Book Store, seeking an injunction restraining defendants from infringing their registered trademark and device mark etc. The petitioner also sought declaration of the trademark VISTARA® as a Well-Known Trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
On 05.08.2019, the suit was decreed in favour of the Petitioner and trademark VISTARA® was declared as a Well-Known Trademark, entitled to the highest degree of protection across all classes including against disparate products and services.
On 23.08.2019, petitioner wrote to the Registrar of Trade Marks to consider the aforesaid decree in favour of the petitioner and consequently include the trademark VISTARA® in the list of Well-Known Trademarks by virtue of Section 11(8) of the Act.
The petitioner was compelled to approach the Court on the refusal of Registrar to take requisite action.
Case Title: Tata Sia Airlines Limited v. Union of India | WP (C) – IPD 64/2021