The debatable issue before the Court was whether, once the Court determines a trademark to be a well-known trademark, is the applicant required to pay the requisite fee along with filing of request on (Form TM-M) to be added to the List of Well-Known Trademarks maintained by the Registrar of Trademarks or should this process be dispensed with and no fee has to be paid once the Court has determined the trademark to be well-known.

The controversy arose when Tata Sia Airlines Limited (‘TSA’) wrote to the Registrar of Trade Marks (‘Respondent’) requesting that its brand VISTARA be added to the List of Well-Known Trademarks, based on determination by the Delhi High Court that VISTARA is a well-known trademark. Following the Registrar’s refusal to accept this request, TSA filed the current writ-petition seeking a direction against the Registrar of Trademarks to consider its letter dated 23rd August, 2019 for inclusion of the trademark VISTARA® in the List of Well-Known Trademarks maintained by the Registrar.

TSA’s arguments were:

1. That once the Court has determined the trademark to be well-known under Section 11(8) of the Trade Marks Act, 1999 (‘the Act’), there is no requirement to file Form TM-M and pay the fee for such determination and the declaration by the Registrar of Trade Marks is merely a formality.
2. Sections 11(6) and (7) enable the Registrar to determine the trademark as a well-known trademark based on certain defined factors and parameters, while Section 11(8) by its clear language makes the Court’s determination of a mark being a well-known mark binding on the Registrar, who must consider it so and include the same in the List of Well-Known Trademarks, with no further questions or procedures.
3. Section 11(8) is a mandatory provision as evident from the use of the word ‘shall’ and Registrar can exercise no discretion for inclusion of mark determined by the Court to be well-known and much less claim lack of any procedure or form/fee to deny Petitioner’s right for inclusion of their trademark VISTARA in the List of Well-Known Trademarks.
4. Plain reading of Rule 124(1) shows that the procedure envisaged therein will apply only to the determination of the trademark as well-known by the Registrar. This procedure will not apply to cases where the Registrar is required to ‘consider’ the trademark to be a well-known trademark based on a determination of a Court under Section 11(8).

The Registrar raised the following contentions:

• Even in cases where determination has already been made by a Court declaring the mark of a proprietor to be a well-known trademark, requisite application under Form TM-M along with the prescribed fee of Rs. 1,00,000 (approx. US$ 1250) has to be paid under Rule 124, enabling the Registrar to process the mark and publish it in the Trade Marks Journal for inclusion in the List of Well-Known Trademarks maintained by the Office of Registrar.
• In such a case, the only difference in procedure would be that when the application is moved and it is brought to the Registrar’s attention that a competent Court/Tribunal has already determined the trademark as a well-known trademark on the basis of evidence led, the same would be directly published under Rule 124(5), without the need to go through the procedure prescribed under Rules 124(3) and (4).

• Rule 10(5) provides that any document filed without the prescribed fee shall be deemed not to have been filed at all. Thus, despite declaration of the trademark as well-known by this Court, Petitioner has to mandatorily file an application in the prescribed Form accompanied by the requisite fee to get the trademark included in the List.

• Rule 124(1) makes it clear that the Registrar is duty bound to follow the procedure and can include the trademark in the List of Well-Known Trademarks only when the requisite Form TM-M is filed and the requisite fee is paid.
• Since the present case is covered by Section 11(8) of the Act, consequently, Registrar would straightaway include the trademark in the List of Well-Known Trademarks under Rule 124(5).
• Even after the determination of the trademark as well-known trademark by the Court, the Trade Marks Office is required to provide various other services such as publication in the Trade Marks Journal, inclusion in List of Well-Known Trademarks, maintaining records of such trademarks, providing inspection, dealing with objections, if any, received in future against such inclusion in the List, etc. All the services have a reasonable nexus with the purpose for which the fee has been prescribed in the First Schedule under Rule 124.

Court’s observations and decision:

The Court dismissed the writ petition while making the following observations:

• As per Section 11(8) of the Act, if the Court has declared a trademark to be a well-known trademark, then the Registrar is only required to include the said trademark in the List of Well-Known Trademarks and cannot enter an exercise for re-determination. This position in law is not disputed or contested by the Registrar.
• In such a case, the procedure will only include making a request in Form TM-M with the prescribed fee, which would be followed by requisite action under Rule 124(5), after verification of certified copy of the judgement of the Court and other administrative modalities, without resorting to the procedure prescribed under Rule 124(3) and (4).
• The purpose of Rule 124 was to streamline the procedure and bring uniformity and going by the language of the Rule, it cannot be restricted in its application to cases where request for ‘inclusion’ is made with respect to a trademark ‘determined’ as well-known by the Registrar under 124(1) and exclude inclusion where such a determination is by the Court.
• Section 11(8) or any other provision of the Act does not provide for the procedure/mechanism for publication and inclusion and the field is open. Therefore, the Rules can fill in the gap and in fact the very purpose of framing Rule 124 was to streamline the procedure for determination of a trademark as well-known by the Registrar as an alternate by a non-adversarial mechanism and also its publication and inclusion in the List. 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.

• The framers of the Rule have carefully used the words ‘Request for inclusion of a Trademark’ and not ‘determination’ of a trademark. When Entry 18 of First Schedule is read with Rule 10(1), (2), (5) and Rule 11(2), there can be no doubt that: (a) the fee is prescribed not just for determination of the trademark but for inclusion of the trademark in the List of Well-Known Trademarks; and (b) deposit of fee is mandatory and failure to deposit the fee prescribed or even where the deposit is of insufficient fee, the document shall be deemed not to have been filed.

Our comments:

This ruling provides much-needed clarity on the procedure to be adopted by a brand owner for its trademark to be added to the List of Well-Known Trademarks, maintained by the Trademarks Registry, where the Court has already, as a part its ruling declared a trademark to be a well-known trademark.