JUDGMENT

Prathiba M. Singh, J.

[This judgment has been pronounced through hybrid mode]

1. The present appeal has been filed by the Appellant-M/s Kamdhenu Ltd. under Section 91(1) of the Trade Marks Act, 1999 (hereinafter, `the 1999 Act') challenging the impugned order dated 23rd April 2019 passed by the Respondent No. 1-Registrar of Trade Marks, New Delhi (hereinafter, `the Registrar') under Rule 124 of the Trade Mark Rules, 2017 (`hereinafter, 2017 Rules').

Background

2. By the impugned order, the Application bearing no. `TM-M 764900' dated 17th August 2017 (hereinafter, `the Application') filed by the Appellant, seeking inclusion of the trademark `KAMDHENU' in the List of Well-Known Trademarks, was rejected by the Registrar.

3. The primary reason given by the Registrar for rejecting the grant of the Application is that the Appellant failed to provide evidence of the well- known status of the mark by way of an affidavit. The operative portion of the impugned order is set out below:

"1. Applicant has not submitted any evidence on affidavit so it is noted that determination of the well- known status cannot be done under provision of sec. 11 (6) or (7) of the TM Act, 1999.

2. Ld. Counsel replied on the decision of the courts/tribunal. The referred cases are -

(1) Before the Registrar in matter of Application No. 617634 & 617636 in the name of Khoday Eshwarsa & Sons, Bangalore vs. Opposition No. 735484 & 735485 thereto by Kamdhenu Ispat Limited and Application No. 1380683 of M/s Pragati primary Milk Products vs. Opposition No. 719115 thereto by Ms. Kamdhenu Ispat Limited (2) Order of the High Court in CS (OS) 2564 of 2015 (M/s Kamdhenu vs. Ms. Pragati Primary Milk Products), and (3) In CS (OS) No. 1204 of 2004 (Kamdhenu Ispat Limited vs. Kamdhenu Metal).

It is noted from the decision of the registrar in the matter of Khoday Eshwarsa & Sons, Bangalore vs. Kamdhenu Ispat Limited. In this matter although a reference is made in regard to well-known status of the mark Kamdhenu but the same was not been determined but it is simply a passing reference. Neither any issue as to well known status of the mark was raised nor was it contested nor any material was appreciated by the Registrar for determination of the trademark as well known trademark.

In the matter of M/s Pragati Primary Milk Products vs. Kamdhenu Ispat Limited, the Registrar has discussed the issue of well-known TM in length and observed that "... Kamdhenu is a common dictionary word and it has been registered in respect of various other products by other proprietors. In such circumstances, I am not inclined to hold that that opponent's mark `KAMDHENU' has been so well-known to the substantial segment of public."

A reference was also made of the decision of the Hon'ble High court of Delhi in the matter of Kamdhenu Ispat Limited vs. Kamdhenu Metal, CS (OS) No. 1204 of 2004 where injunction was granted on the basis of deceptive similarity of the mark under question and the basis of engagement of the plaintiff in the same field of activities of the plaintiff. The Hon'ble court has nowhere observed or determined Kamdhenu as a well-Known trademark.

Another reference was made of the Hon'ble High court of Delhi in the matter of Kamdhenu Ispat Limited vs. Pragati Primary Milk Products, CS (OS) 2564 of 2015 wherein an ad interim injection was allowed in favour of the plaintiff but the Hon'ble court has not observed Kamdhenu as a well-known trademark although a reference as such was made in the submissions by the Ld. Counsel for the plaintiff.

In view of above, the Tribunal observes that the Trade Mark `KAMDHENU' cannot be considered to be a fit mark for inclusion in the list of well-Known trademarks in accordance with provisions of rule 124 of The Trade Marks Rules, 2017. The Present petition is accordingly disposed off.

Signed and Sealed at Mumbai dated this 23rd day of April, 2019.,"

4. The Appellant, initially preferred an appeal before the Intellectual Property Appellate Board (`IPAB') in