In a recent case of Kamdhenu Ltd vs The Registrar Of Trade Marks1, the Hon'ble Delhi High Court passed a noteworthy order while holding that documentary evidence without an affidavit can still establish well-known status of the mark. While allowing the Appeal in the present case, the Court held that Non-filing of the affidavit by the Appellant could not have resulted in the dismissal of the Application itself.
- A request under the Form-TM-M vide Application no. TM-M764900 of the Trade Mark Rules 2017 (hereinafter referred to as the "the Application") was filed by M/s Kamdhenu Limited (hereinafter referred to as the "the Appellant") dated August 17, 2017 to include the trademark 'KAMDHENU' in the List of Well-Known Trademarks in India.
- The Registrar rejected the grant of the Application primarily stating the reason that the Appellant failed to provide evidence of the wellknown status of the mark by way of an affidavit.
- In the impugned order, the Registrar has referred and commented
on the cases upon which the Appellant relied in the documentary
evidence as below:
|1||KAMDHENU TMT||TMT Bars.||1994|
|4||KAMDHENU HOMZ||Real Estate.||2006|
|5||KAMDHENU WIRE BOND||Wire Bond.||2006|
|8||KAMDHENU COLOUR DERAMZ||Paints.||2008|
|10||KAMDHENU PVC||PVC Pipes.||2008|
|11||KAMDHENU CONSTRUCTION CHEMICALS||Construction Chemicals.||2009|
|12||KAMDHENU FRESH||Mineral water.||2009|
|13||KAMDHENU SS10000||Premium TMT||2013|
|14||KAMDHENU SHEETS||Colour Coated Sheets||2014|
|15||KAMDHENU NXT||TMT Bars||2017|
Khody Eshwarsa & Sons, Bangalore vs. Kamdhenu Ispat Limited.
In this matter although a reference is made in regard to well-known status of the mark Kamdhenu but the same was not been determined but it is simply a passing reference. Neither any issue as to well known status of the mark was raised nor was it contested nor any material was appreciated by the Registrar for determination of the trademark as well known trademark.
Kamdhenu Ispat Limited vs. Kamdhenu Metal; CS (OS) No. 1204 of 2004
An ad interim injection was allowed in favour of the plaintiff but the Hon'ble court has not observed Kamdhenu as a well-known trademark although a reference as such was made in the submissions by the Ld. Counsel for the plaintiff.
Kamdhenu Ispat Limited vs. Pragati Primary Milk Products; CS (OS) 2564 of 2015
An injunction was granted on the basis of deceptive similarity of the mark under question and the basis of engagement of the plaintiff in the same field of activities of the plaintiff. The Hon'ble court has nowhere observed or determined Kamdhenu as a well-Known trademark.
The Tribunal relied upon the above observations to conclude that the Mark 'KAMDHENU' shall not be included in the list of Well-Known trademarks as per the provisions of Rule 124 of The Trade Marks Rules, 2017.
- The Appellant claimed to be the owner and proprietor of the trademark 'KAMDHENU' which was adopted by the Appellant in the year 1994 in relation to various goods and services such as TMT steel bars, structural steel, plywood, PVC pipes, plaster of paris, etc. Over the years the Appellant gradually ventured into the business of milk, dairy products, mineral water, paint, reals estate, etc. since 1994. The aforesaid expansion is mentioned as below:
- The Appellant has also filed and registered several trademarks in various classes, and has also obtained copyright registrations for the mark 'KAMDHENU'. The Appellant prominently features its mark 'KAMDHENU' on its registered domain name www.kamdhenulimited.com which is being used for Advertisement and Promotion purpose.
- The Appellant claims to have a network of more than 8500 dealers and produces 25 lakh metric tons of steel bars and structural steels every year. With their strong reputation and expansion into different industries, the Appellant intended to seek well-known status.
- The Application was filed dated August 17, 2017, along with various documents evidencing use of the mark 'KAMDHENU' such as newspaper advertisements, contracts, invoices, media-related documents, a list of successful cases laws and judicial orders recognizing the 'KAMDHENU' as a well-known mark were filed.
- Pursuant to a hearing dated February 22, 2018 before the Learned Deputy Registrar of Trade Marks and Geographical Indication, the Application was rejected primarily due to the Appellant's failure to provide evidence of the well-known status of the said mark by way of an Affidavit.
- The Appellant filed an appeal before the Intellectual Property Appellate Board (IPAB) in 2019, which was later transferred to the Delhi High Court in the year 2021 after the abolition of the IPAB.
Submissions by the Appellant
The learned counsel appearing on behalf of plaintiff made the following submissions before the honorable court:-
- As stated in the order, the Learned Registrar rejected the Application primarily on the ground of non-filing of evidence by way of an Affidavit even after several documentary evidence were submitted in support of their claim for inclusion of the mark 'KAMDHENU' as well-known.
- Rules 80, 86, 95, 96 and 45 of the Trademark Rules 2017 specifically state, whenever the evidence is to be filed by way of an affidavit. Further, Rule 124 of the Trademark Rules, 2017 does not mandate that the submission of evidence has to be filed only by way of an Affidavit in order to include a mark under the List of Well-Known marks in India. If documentary evidence is filed, the same should be sufficient for compliance with the said rules.
- Filing only the supporting documentary evidences along with the application, could have been considered as a curable defect and instead of directly rejecting the Application, an opportunity should have been provided to the Appellant to file the required Affidavit.
- Relying upon the provisions of the Indian Evidence Act, 1872, the Appellant stated that evidence include both oral and documentary evidence and as per the Section 1, the Indian Evidence Act is not applied to Affidavits which are presented before a Court or an officer. Thus, submission of merely an Affidavit is not considered as an evidence and rejecting an application solely on this ground is unjustified.
- That Section 129 of the Trade Marks Act, 1999 states that during any proceeding before the Registrar, the evidence shall be given by Affidavit. However, if the Registrar deems it appropriate, they may accept oral evidence instead or in addition to the evidence provided by Affidavit. The Appellant further content that the provision is a directory provision, in terms of the Statement of Objects and Reasons accompanying the Trade Marks Bill, 1999.
Submissions by the Respondent
The Respondent i.e. the Registrar of Trademarks relied upon a
public notice dated May 22, 2017 issued by the Office of the
Controller General of Patents, Designs and Trademarks which stated
the requirements of filing evidence in order to declare a mark as
Further they also contended that, considering the nature of the evidences if an Affidavit is not filed it would mean that the same cannot be considered by the Registrar.
What are Well-known Trademarks?
The concept of Well-Known Trademarks was introduced by the Trade Marks Act, 1999. A well-known trademark is defined in Section 2(zg) of the Trade Marks Act 1999. The Registrar is obligated to consider certain facts while determining whether a mark is a well-known trademark or not, as laid down in Section 11(7) of the Trade Marks Act, 1999. Further, Section 11(9) of the Trade Marks Act, 1999states the negative stipulations, laying down the conditions that may not be required for considering a mark as a well-known mark
Issue raised in the case:
What is the nature of the evidence and the documents which are to be filed by an Applicant for determination of a Trademark as a well-known trademark under Section 11 of the Trade Marks Act, 1999 read with Rule 124 of the the Trade Mark Rules 2017?
After hearing the submissions of both the parties, the Hon'ble Court observed the following:
- As stated in the case Rolex SA v. Alex Jewellery Private Limited [215 (2014] DLT 6] "The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods", it was observed that that a mark need not be widely known by the general public or society as a whole. Instead, it is sufficient if the mark is well-known within a specific segment of the trade or consumers. Further in the case Tata Sia Airlines Ltd. v. Union of India (2023:DHC:3659), it was observed by the court that Rule 124(5) of the Trade Mark Rules 2017 does not draw any difference between a well-known trade mark declared by the Court, or by the Registrar.
- As per Rule 124 of the Trade Mark Rules 2017, Form TM-M i.e.
the Application is to be filed along with the statement of case,
all the evidence and documents in order to record a mark as
well-known in the List of Well-known Marks. Thereafter, the
Registrar will determine whether the mark is well-known. Rule 124
of the Trade Mark Rules 2017 states as below: "124.
Determination of Well Known Trademark by Registrar.-
- Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.
- The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.
- For the purpose of determination, the Registrar may call such documents as he thinks fit.
- Further, the Learned Judge stated that the documentary
evidences required while filing a request for well-known mark would
have to be substantially documentary and showing continuous use,
reputation and goodwill of a trademark and could include the
- Invoices showing use of the mark in a large geographical area rather than a restricted area;
- Promotion and advertising of the mark through investment made as also copies of electronic and print advertising;
- Participation in exhibitions, trade fairs, any market survey, decisions of Courts enforcing the trademark in respect of related or unrelated goods;
- The consumer base for the concerned product or service and any material that would establish the recognition of the mark by the said consumer base, such as a Market Survey;
- Number of C&F Agents, wholesale distributors, retail distributors, retailers;
- Exposure on e-commerce platforms;
- Any awards or recognition.
- Balance sheets, chartered accountant certificates and other accounting related documents to establish sales figures and investment on promotion, advertising, etc.
- Rule 124 of the the Trade Mark Rules 2017 states the word "evidence and documents" which could also include affidavits by way of evidence and other documents. The Hon'ble Court also noted that the Trade Marks Rules nowhere states that submitting an affidavit along with documentary evidence is mandatory. Submitting mere Affidavit by way of evidence without supporting documents may not be sufficient to determine the well-known status of the mark and submitting of documentary evidence without of an Affidavit are enough to prove well-known status of the mark.
- While some documents may be publicly acknowledged and verifiable without an affidavit, others may require one to support certain facts, such as the reasons for adoption of a mark. However, there is no hard and fast rule that an affidavit is mandatory, and even the Public Notice nowhere mentions the requirement of an affidavit.
- That an Affidavit by way of evidence cannot be set as an essential pre-requisite to determine the well-known status of the mark but documentary evidence would be essential under the Trade Marks Act, 1999 and the the Trade Mark Rules 2017. However, if the Registrar believes that certain documents need to be supported by an Affidavit, then opportunity may given to the Appellant to file the Affidavit and allow them to provide additional evidence or address any concerns raised, instead of rejecting the application;
- The Court also noted that in the present case, the Appellant had submitted supporting documents and hence the Registry should have given it an opportunity to establish its claim for well-known status, instead of dismissing the Application directly.
Decision of the Court
After observing the above submissions, the Hon'ble Court issued an order in favor of the Appellant. The Court granted the Appellant an opportunity to file a supporting Affidavit and any further documents in support of its Application for the recordal of its mark 'KAMDHENU' as well-known before the Registrar of Trade Marks within eight weeks. Further, the Court ordered the Registrar to schedule a hearing in the said matter, and decide the said application in accordance to the merits of the case.
1. C.A.(COMM.IPD-TM) 66/2021
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.