The main legal point established in the judgment is the interpretation and application of the criteria for determining a well-known trade mark under Section 11(6) of the Trade Marks Act, 1999.

JUDGMENT

C. Hari Shankar, J.

1. CS(COMM) 919/2022, instituted by the plaintiffs against the defendant stands partly decreed in terms of prayers (a) to (d) in the suit by judgment dated 23rd December 2022.

2. Prayer (e) in the suit seeks a declaration that the plaintifffs' [IMG] mark is a well-known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

3. Section 11(6) of the Trade Marks Act sets out the factors which are to be taken into consideration by the Registrar while determining whether a mark is a well-known. It reads as under:

"(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including--

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record."

4. Mr. Sidhant Goel, learned Counsel for the defendant, has no objection to the plaintiffs' mark being declared as a well-known trade mark.

5. Mr. Pravin Anand, learned Counsel for the plaintiffs, has set out the data available with respect to each of the five factors enumerated in Clauses (i) to (v) of Section 11(6) of the Trade Mark as being relevant for deciding whether a mark is eligible for being declared a well-known trade mark, thus:

(i) Re: Factor -I

The knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark.

a. The Plaintiffs have stores in Mumbai and Delhi and its products bearing Plaintiffs' H [IMG] trade mark, are displayed at the stores. The Plaintiffs have curated several catalogues for their stores in Delhi and Mumbai.

b. The Plaintiffs have mentioned retail distributions and revenue generated in its activity report for the year 2021.

c. Several articles and magazines such as Vogue, Harpar Bazaar etc. have reviewed and recognised the Plaintiffs' sandals with H [IMG] trade mark.

(ii) Re: Factor 2: The duration, extent and geographical area of any use of that trade mark.

a. The Plaintiffs' H trade mark was coined and Plaintiffs' Oran sandals having the said trade mark was conceptualised in the year 1997, by Mr. Pierre Hardy, Creative Director of Plaintiffs' company and a famous French designer.

b. The Oran Sandals with the Plaintiffs' trademark were inspired by the house decorations of Africa's Ndebele tribe and is made with soft leather and characterized by a leather band, with the iconic H cut-out representing the Plaintiffs' fashion house.

c. The Plaintiffs since coining of the trade mark have used the said trade mark in several products, significantly in its sandals such as Oran sandals, Oasis sandals and Legend sandals.

d. The Plaintiffs' H [IMG] trade mark has been since 1997 in circulation in the market. The Plaintiffs have range of footwear bearing the Plaintiffs' H [IMG] trade mark.

e. Recently, in the year 2022, the Plaintiffs celebrated a silver jubilee i.e. 25th anniversary of its signature Oran sandals.

f. In India, the Plaintiffs advertise their products through their stores and have showcased the Plaintiffs' products bearing the Plaintiffs' H [IMG] trade ma