KAMDHENU LTD ….. Appellant
Versus
THE REGISTRAR OF TRADE MARKS ….. Respondent
Date of the Order:- 06.07.2023
The Appellant’s story is that appellant is a company, incorporated as Kamdhenu Ispat Limited later on changed its name to Kamdhenu Limited with effect from 27th January, 2016 .
The Appellant claimed to be the owner and proprietor of the trademark ‘KAMDHENU’ in relation to various goods and services. The mark ‘KAMDHENU’ is stated to be adopted in the year 1994, and has been used on various goods.
The Appellant also claimed to have filed and registered several trademarks, including copyright registrations for the mark ‘KAMDHENU’ in various classes. The ‘KAMDHENU’ mark prominently features in the domain name www.kamdhenulimited.com, which is used as a website to promote and advertise the Appellant’s business and goods.
APPLICATION FOR BEING DECLARED AS WELL KNOWN MARK
In view of the enormous goodwill which appellant enjoyed, and diversification into various businesses, the Appellant intended to seek well-known status, filed an Application before the Trademark Registry seeking declaration as a ‘well-known mark’ under Section 11(8) of the 1999 Act and Rule 124 of the 2017 Rules.
REJECTION OF APPLICATION BY TRADEMARK REGISTRY
The Application along with various supporting documents, such as judicial orders recognising the Kamdhenu brand as a well-known mark, were also filed. Newspaper advertisements, contracts, invoices, media-related documents, and a list of successful cases where the Appellant obtained an injunction in respect of the ‘KAMDHENU’ mark were also placed on record. Before ld. Deputy Registrar of Trade Marks a hearing took place but the Application for inclusion in the list of well-known trade marks was rejected.
REASON FOR REJECTION OF APPLICATION
The primary reason given by the Registrar for rejecting the grant of the Application was that the Appellant failed to provide evidence of the well-known status of the mark by way of an affidavit.
The present appeal has been filed by the Appellant-M/s Kamdhenu Ltd. under Section 91(1) of the Trade Marks Act, 1999, challenging the impugned order dated 23rd April 2019 passed by the Respondent No. 1-Registrar of Trade Marks, New Delhi under Rule 124 of the Trade Mark Rules, 2017.
Counsel appearing for the Appellant submitted that the Registrar’s approach was erroneous, as the primary ground on which the Application had been rejected was due to the non-filing of evidence by way of an affidavit. It was submitted that under Rule 124 of the 2017 Rules, it is not mandatory for the Applicant to file evidence only by way of affidavit The Appellant had filed several documents in support of their claim for well-known status for its mark ‘KAMDHENU’.
Therefore, if documentary evidence is filed, as in the present case, the same should be sufficient for compliance with Rule 124 of the 2017 Rules, and same ought to be examined by the concerned Registrar.
HON’BLE DELHI HIGH COURT OPINION
Concept of well-known trade mark.
The 1999 Act also introduced the concept of well-known trade marks. Well-known trade mark is defined in Section 2(zg) of the Act as under:
“well known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
Section 11 of the 1999 Act was introduced to include factors that could entail in the declaration of a mark as a well-known trademark. Section 11(6) of the 1999 Act outlines various conditions and factors to be taken into consideration for granting well-known trademarks. Section 11(7) of the 1999 Act places an obligation on the Registrar to consider certain facts while determining whether a mark is a well-known trademark or not. Section 11(9) of the 1999 Act provides negative stipulations, laying down as to what are the conditions that may not be required for considering a mark as a well-known mark.
Rule 124 of the 2017 Rules in addition to Section 11 of the 1999 Act, lays down the process by which the Registrar can declare a mark as a well-known mark.
The question that arises in the present case is what is the nature of the evidence, and the documents which are to be filed by an Applicant for determination as a well-known trademark under Section 11 of the 1999 Act read with Rule 124 of the 2017 Rules.
EVIDENCE TO BE INCLUDED IN THE APPLICATION FOR DECLARING TRADMARK AS WELL KNOWN MARK
Hon’ble Court said, that evidence would have to be substantially documentary in nature, which would establish contemporaneous and continuous use, reputation and goodwill. Such documents could inter alia, include:
DOCUMENTS TO BE INCLUDED IN THE APPLICATION FOR DECLARALATION FOR WELL KNOWN MARK
1.Invoices showing use of the mark in a large geographical area rather than a restricted area;
2.Promotion and advertising of the mark through investment made as also copies of electronic and print advertising;
3.Participation in exhibitions, trade fairs, any market survey, decisions of Courts enforcing the trademark in respect of related or unrelated goods;
4.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;
5.Number of C&F Agents, wholesale distributors, retail distributors, retailers;
6.Exposure on e-commerce platforms;
7.Any awards or recognition.
8.Balance sheets, chartered accountant certificates and other accounting related documents to establish sales figures and investment on promotion, advertising, etc.
WHAT LAW SAYS ABOUT THE EVIDENCE FOR DECLARATION OF TRADEMARK AS WELL KNOWN MARK
Court said, Rule 124 of the 2017 Rules uses the word “evidence and documents”. The same could also include affidavits by way of evidence and other documents. However, it cannot be held that an affidavit would be mandatory, so long as there is sufficient evidence. A perusal of the word ‘evidence’ in the Trademark Act and 2017 Rules would show that evidence under Section 129 of the 1999 Act is to be given by affidavit.
However, oral evidence can also be taken into consideration. Section 129 of the 1999 Act cannot be read to mean that evidence only means ‘oral evidence’ or ‘evidence by way of an affidavit’ as defined in Section 3 of the Evidence Act.
As per Section 3 of the Evidence Act, ‘evidence’ would include both oral evidence and documentary evidence.
Considering the Evidence Act, the nature of the determination by the Registrar would in any event entail filing of the documentary evidence, as mere affidavits by way of evidence without supporting documents may not even be sufficient to establish the well-known status of the mark.
IMPORTANCE OF DOCUMENTARY EVIDENCE
Documentary evidence without an affidavit can still establish well-known status of the mark as the statement of case would be setting out the relevant description of the documents. Some documents could even be publicly acknowledged and verifiable documents. These documents may not require an affidavit to verify authenticity or genuinity. Some facts could be of such a nature that they could be placed only by way of an affidavit, and no documents may exist to support such facts. For example, reasons for adoption of a mark, manner of coining of mark, family history of use etc. Thus, there can be no hard and fast rule that an affidavit is mandatory. Even the Public Notice by trademark office, does not specifically mention the requirement of an affidavit.
Considering the above legal position, it is held that in order for a determination of well-known status of a trademark, affidavit by way of evidence cannot be held to be a mandatory requirement for grant of well-known status under the 1999 Act and the 2017 Rules. However, documentary evidence would be required.
Accordingly, the Appellant is given an opportunity to file a supporting affidavit, and any further documents in support of its Application for grant of well-known status for its mark ‘KAMDHENU’.
The Registrar of Trademark shall afford a hearing to the Appellant, and decide the said application in accordance with law.
Appeal allowed.
Read, Reviewed & Edited by
Neeraj Gogia, Advocate