JUDGEMENT

JYOTI SINGH, J.

C.M. APPL. 11/2022 (Exemption)

Allowed, subject to all just exceptions.

Application stands disposed of.

W.P.(C)-IPD 64/2021 & CM APPL. 47831/2019 and 10/2022

1. Present writ petition has been filed by the Petitioner seeking a writ of mandamus directing the Respondent to consider Petitioner’s letter dated 23.08.2019 for inclusion of the trademark VISTARA® in the List of Well-Known Trademarks maintained by it, amongst other reliefs.

2. Factual expose to the extent relevant and captured in the writ petition is that the Petitioner is a joint venture between Tata Sons Private Limited and Singapore Airlines Limited, with Tata Sons holding majority stake of 51% in the Petitioner. It operates its full- service Airlines under the trademark VISTARA®, both domestic and international and has a growing fleet of Aircrafts. On account of impeccable, excellent and efficient services provided, Petitioner’s mark VISTARA® has become a widely recognized and trusted brand in travel and hospitality sectors in India. VISTARA® was adjudged as one of India’s most promising brands in the year 2016. Several honours and awards have been earned by the Petitioner and its growing popularity and distinctiveness of the mark VISTARA® is evident from the sales turnover as well as substantial expenditure incurred on promotion and advertisements which illustratively, was to the tune of Rs. 33.73 crores for the Financial Year 2017-18.

3. On account of continuous and extensive use of the trademark VISTARA®, the same has become synonymous with and is exclusively associated by the public with Petitioner’s services. It was on 11.08.2014 that Petitioner announced its intention to use the trademark VISTARA® for its Airlines. Petitioner has obtained registrations for the trademark VISTARA® in multiple classes 12, 16, 18, 21, 25, 27, 28 and 39 and applications for registrations are pending in certain other classes. Petitioner has always been vigilant in protecting its statutory and common law rights in relation to its intellectual property and wherever required, injunction suits and oppositions have been filed against third-parties.

4. On 25.03.2019, Petitioner filed a suit titled TATA SIA Airlines Limited v. M/s. Pilot18 Aviation Book Store & Anr., being CS(COMM) 156/2019 before this Court seeking injunction restraining the Defendants therein from infringing the registered trademark VISTARA® and device mark and passing off etc. Petitioner also sought declaration of the trademark VISTARA® as a well-known trademark as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’). On 05.08.2019, suit was decreed in favour of the Petitioner and trademark VISTARA® was declared as a well-known trademark, entitled to the highest degree of protection across all classes including against disparate products and services.

5. As the chronology of events goes, on 23.08.2019 Petitioner wrote to the Registrar of Trade Marks (hereinafter referred to as the “Registrar”), to consider the decree passed by this Court and consequently include the trademark VISTARA® in the List of Well- Known Trademarks, by virtue of the provisions of Section 11(8) of the Act. Petitioner was compelled to approach this Court on refusal of the Registrar to take the requisite action.

6. On 04.11.2019, notice was issued in the writ petition and after formulating the issue arising in the present petition as under, Respondent was directed to file an affidavit:-

“….

The question is whether, once the Court has determined a trademark to be a well-known mark, the Petitioner is required to comply with Rule 124 of the Trademark Rules, and pay the requisite fee along with filing of form TM-M. The stand of the Petitioner is that once the Court has determined the mark to be well-known under Section 11(8), there ought to be no necessity to file form TM-M or to pay the fee for such determination and the declaration by the Registrar of Trademarks is merely a formality ….”

7. Vi