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2023 Supreme(Del) 3940
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Kent Cables Private Limited & Ors. – Appellants
Versus
Union of India Through Its Secretary Department For Promotion of Industry And Internal – Respondent
W.P.(C)-IPD 30 of 2023 & CM 80 of 2023
Decided On : 11-08-2023
Ms. Swathi Sukumar, Mr. Naveen Nagarjuna, Mr. Pratyush Rao, Mr. Rishubh and Mr. Ritik Raghuwanshi, Advocates, for the Petitioners.
Mr Harish Vaidyanathan Shankar, CGSC, with Mr Srish Kumar Mishra, Mr Alexander Mathai Paikaday and Mr M Sriram, Advocates, for the Respondent.
Mr. Akhil Sibal, Senior Advocate with Mr. Ankur Sangal, Mr. Ankit Arvind, Ms. Amrit Sharma, Mr. Raghu Vinayak Sinha and Ms. Asavari Jain, Advocates, for the Respondent-3.
The reliance on court orders and disclosure of relevant pending litigations are crucial factors in determining a mark as well-known under the Trade Marks Act, 1999.
Headnote:
Well-Known Mark - Jurisdiction - Procedural and Substantive Issues
Fact of the Case:
The petition seeks to set aside the publication of a trade mark 'KENT' as a well-known mark under Rule 124(5) of the Trade Mark Rules, 2017. The jurisdictional issue arises regarding the processing and hearings for well-known mark status, alternative remedies, and review under the Trade Marks Act, 1999.
Finding of the Court:
The Court directed the parties to file written submissions and judgments on the aspect of maintainability and jurisdiction within four weeks. The Court clarified the usual course of action for well-known mark applications and emphasized the need to examine reliance on court orders and disclose relevant pending litigations before declaring a mark as well-known.
Issues: Jurisdiction, Procedural and Substantive Issues, Alternative Remedies, Review under the Trade Marks Act, 1999
Ratio Decidendi: The Court emphasized the need to examine reliance on court orders and disclose relevant pending litigations before declaring a mark as well-known under Section 124(5) of the Trade Marks Act, 1999.
Final Decision: Listed for further hearing on 4th October, 2023.
JUDGMENT
Prathiba M. Singh (Oral)--This hearing has been done through hybrid mode.
2. The present writ petition has been filed by the Petitioners with the prayer seeking a direction to be passed to Respondent No. 1-Registrar of Trade Marks, to set aside the publication in Trade Mark Journal no. 2110 dated 26th June, 2023, whereby the Respondent No. 3's trade mark `KENT' has been advertised as included in the list of well-known trade marks under Rule 124 (5) of the Trade Mark Rules, 2017. Vide order dated 14th July, 2023, this Court had directed the office of the Registrar of Trademarks to produce the entire record leading up to the publication, along with the application made by Respondent No. 3 for the grant of well-known mark status.
3. In compliance with the directions given in order dated 14th July, 2023, the Registrar of Trade Marks has filed its entire record which runs into more than a thousand pages. There are various issues that arise in this matter in respect of declaration of a well known mark by the Registrar of Trade Marks. The issues that arise are both procedural and substantive as also relating to jurisdiction.
4. On the question of jurisdiction, the issue raised by the Respondent is as under:
i. That all applications for well-known mark status are processed and hearings are held and orders are passed only in the Registrar of Trade Marks' Office in Mumbai.
ii. That a writ petition would not lie against such an advertisement/publication by the Registrar of Trade Marks seeking declaration of a trade mark as a well-known mark before any other Court except the High Court of Bombay.
iii. The alternative remedy of filing an appeal under Section 91 of the Trade Marks Act, 1999 exists which would only lie before the High Court of Bombay.
iv. The question as to whether the declaration of well known mark status would also be subject to review under Section 124(6) and 127 of the Trade Marks Act, 1999.
5. On behalf of the Petitioner, the submission is:
i. That the well known mark application was filed with the address of service in Gurgaon.
ii. The applicant for the well known mark has given an address based out of New Delhi.
iii. A substantial part of cause of action arises in New Delhi in view of this submissions A and B.
iv. All the High Court Orders relied upon by the applicant for declaration of a well known mark on the basis of Section 125 of the Act are orders passed by the High Court of Delhi.
6. On behalf of the Registrar of Trade Marks, on a query put by the Court, it is submitted by Mr. Harish V. Shankar, ld. CGSC that for the purpose of well-known mark declaration, physical hearings are held in the office of the Registrar of Trade Marks in Bombay, however, there are also virtual hearings which are held. Mr. Shankar, ld. CGSC also submits that the record in respect of the well-known trademarks is maintained with the Bombay Branch of the Registrar of Trade Marks.
7. Considering the above submissions and counter submissions of the parties, let parties file the written submissions and judgments on the aspect of maintainability and jurisdiction within four weeks.
8. While the decision in this particular case would be made by this Court after hearing ld. Counsels for the parties, on the legal position in respect of declaration of well known trademarks, it is clarified that the usual course of action when an application is made to the Registrar would be to invite objections from the general public. However, in case, any applicant is relying on Court orders for determination as a well-known mark, the Registrar ought to examine as to whether the said Court order has given a specific declaration of a particular mark as a well-known mark or is the reliance by the applicant merely on observations in the passing, especially, in prima facie observations or any ex parte injunction orders. In addition, applicants ought to be also asked to disclose any relevant pending litigations where there is a contest over the legality, valid
