Introduction
"Well-known trademark" has been defined in Section 2(1)(zg) of the Trade Marks Act, 1999. A well-known trademark is one which through its extensive and continuous use has become so known in public that if any new goods or services would be provided under that mark other than those goods or services for which it is already being used, it would likely indicate that the new goods or services are connected to the user of the mark who has already been using it.
Well-Known Trade Marks: Before and After The Trade Marks Rules, 2017
The Trade Marks Rules, 2017 introduced an easier procedure for recognition of well-known trademarks by making an application under Rule 124(1), because prior to this, a recognition by the Registrar or Courts as to a particular mark is a well-known trademark during the proceedings of opposition, rectification, or infringement was the only procedure through which a trademark was known as a well-known trademark.
To get rid of this time-consuming practice and provide the trademarks' owners with additional means to get their trademarks recognised as well-known trademarks, the Trade Marks Rules, 2017 was enacted which now provides a simpler process to get a trademark determined as a well-known trademark by requesting the Registrar under Rule 124.
Development and Contentious Issues with regard to the Applicability of Rule 124
After enactment of the Trade Marks Rules, 2017, trademarks' owners can now get their trademarks determined as well-known easily unlike before the enactment when they used to face difficulties in the proceedings. Thus, this is a significant development with regard to well-known marks.
But, one of the contentious issues under the Trade Marks Rules, 2017 is whether the procedures of Rule 124(1) to (4) has to be followed for inclusion of a trademark in the List of Well-Known Trade Marks when the trade mark has already been declared as well-known by a court? This issue has been raised before the Delhi High Court in the case of TATA SIA Airlines Limited v. Union of India, W.P.(C) 11642 of 2019. The case is still sub-judice, so the ruling of the Court is awaited.
In the above-mentioned case, the plaintiff, Tata Singapore Airlines (Tata SIA) obtained an order from the court which determined their mark VISTARA to be well-known. With a request to include VISTARA in the List of Well-Known Trade Marks, Tata SIA approached the Trade Marks Registry, but the Registrar insisted on the filing of the requisite Form TM-M along with the requisite fee. TATA SIA, subsequently, filed a writ petition in the Delhi High Court against the stand of the Registry. The Registry in an affidavit stated that even though the petitioner had obtained a Court order declaring VISTARA as a "well-known mark", they still have to submit the prescribed form and requisite fees for publishing it in the Trade Marks Journal. The Registry, however, stated that they shall not adjudicate upon as to whether the mark is well-known or not, but shall only process the form of the petitioner as per the relevant provisions.
Analysis of Rule 124 of the Trade Marks Rules, 2017
The phrase "request the Registrar" in Rule 124(1) shows that the procedure mentioned therein has to be followed when an owner of a trademark approaches the Registrar of Trade Marks for recognition of his mark as a well-known trade mark. It implies that filing of Form TM-M and the payment of fees is not required when the determination is not to be done by the Registrar of Trade Marks.
So, when a mark has been declared as a well-known trademark by a Court itself, the owner should not be required to file the application in Form TM-M and pay the fees. It is not required to be determined by the Registrar again, only its publication in the Trade Marks Journal and inclusion in the List of Well-Known Trade Marks is to be completed. So, in such a case where a Court declares a trademark to be well-known, the owner must not be required to follow the procedure laid down in Rule 124(1) to (4) and thus, the procedure laid down in Rule 124(5) should be directly followed, i.e., the well-known trademark should be published in Trade Marks Journal and included in the List of Well-Known Trade Marks without any requirement of filing of Form TM-M and the requisite fees.
Conclusion
The enactment of the Trade Marks Rules, 2017 is a significant development with regard to well-known marks as it provided additional procedure to get the recognition of a trademark as well-known by the operation of Rule 124. But it has not resolved the issue regarding the following of procedures mentioned in Rule 124(1) to (4) for inclusion of a Court-declared well-known trademark in the List of Well-Known Trade Marks.
The Public Notice released by the CGPDTM on May 22, 2017, provides for the general guidelines regarding the determination of well-known trademarks. The guidelines are nothing but a replica of what is already given in Rule 124 because the guidelines are from the point of view of when the Registrar determines a trademark to be well-known.
Therefore, the procedures need to be changed for the trademarks which are already declared as well-known by Courts. The owners of such already declared well-known trademarks should not be required to follow all the procedures which an owner of a trademark has to follow when he requests for recognition of his trademark as well-known under Rule 124(1). Further, a time limit should also be provided for the recognition of a trademark as a well-known trademark which so far has not been given in the Act or the Rules.
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