Rule 124: Trademark Rules To Be Followed By Registrar Even Where There Is Declaration Of Well-Known Trademark - Delhi HC In Vistara Case
A Delhi High Court Bench of Justice Jyoti Singh has observed 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".
In that context, it had been held that "there is no conflict between the provisions of Section 11(8) and Rule 124 is an enabling provision for enforcing and giving effect to Section 11(8) after the trademark has been declared to be well-known by a judicial order. Legislature while enacting Section 11(8) has proscribed the Registrar from re-determining a trademark already declared as well-known by a Court/Registrar and does not deal with the procedure or mechanism for determination or publication or inclusion of the trademark, which is separately provided for in Rule 124 read with the Schedules".
Counsel Pravin Anand, among others, appeared for the petitioner. Central Government Standing Counsel Asheesh Jain, among others, appeared for the Union of India.
In this case, TATA Sia Airlines Limited approached the Court seeking relief subsequent to the declaration of the mark VISTARA as a Well-Known Trademark. The issue before the Court was whether he petitioner could be compelled to comply with Rule 124 once the court had declared the mark to be a Well-Known Trademark and whether, in such a case, the request for inclusion of the mark in the list of Well-Known Trademarks should necessarily be made on Form TM-M along with the prescribed fee.
The Court took the considered view that there was no conflict between the provisions of Section 11(8) and Rule 124 is an enabling provision for enforcing and giving effect to Section 11(8) after the trademark has been declared to be well-known by judicial order. In furtherance, the Court observed that "The interpretation is fortified by reading the entire scheme of the 2017 Rules along with the First and Second Schedules thereto. In Rule 11(1), the word used is “shall” and the mandate is that the Forms set forth in the Second and Third Schedules shall be used in all cases, to which they are applicable. Second Schedule relates to ‘Forms’ and against TM-M in Column-2 under the heading ‘Section and Rules of the Act & Rules’, Rule 124 is mentioned. Column-3 deals with ‘Title for which form may be used’ under which there is a clear reference to ‘Request to inclusion of a mark in List of well-known trademarks’. Therefore, when Column-3 is read with Rule 11, the inescapable conclusion is that even for a request to include a trademark in the List of Well-Known Trademarks, Form TM-M is mandatory".
Further, the Court considered the payment of fees, and said that "Rs. 1,00,000 is prescribed not just for determination of trademark but for inclusion of the same in the list as well and, non-payment or insufficient payment shall be deemed as non-filing of the documents followed by consequences stipulated under the Rules of 2017".
Therefore, the petition was dismissed.
Cause Title: Tata Sia Airlines Limited v. Union of India [Neutral Citation Number: 2023:DHC:3659]
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