December 15, 2018
Back to Bulletin Main Page
INDIA: Court Questions Proper Forum for Determining Well-Known Marks
On July 27, 2018, in Texmo Industries v. Mr. Roshan Kumar, C.S. No. 357/2017, while deciding a trademark infringement case, the Madras High Court said that the Trade Marks Registry was the proper authority to respond to the plaintiff’s request for the court to declare its trademark, TEXMO, a well-known trademark.
The new Trade Marks Rules, 2017 laid down specific criteria and procedures that allow the Registrar to declare a trademark well known.
The term “Well-Known trade mark” was defined under the Trade Marks Act, 1999 as:
a mark which has become so to the substantial segment of the public which uses such goods or receives such that the use of such mark in relation to other goods or services would be likely to indicate a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
The dilemma that the court was faced with was that, while the Act’s literal interpretation is that a court or a tribunal has the right to determine a mark to be well known, the court itself has taken divergent views in light of the new Trade Marks Rules, 2017 and in particular, Rule 124, which has created a new procedure to recognize well-known trademarks. Rule 124 gives a party the right to file a specific request (Form M-M) to have a mark listed and declared as a well-known mark. The single bench in this present matter opined that the court only had the authority to decide the factors relating to the mark being well known, and that the Trade Marks Registry was better equipped to appreciate the documentary evidence submitted and was the only appropriate forum to be approached for such a declaration.
The question has been referred to a division bench to consider whether the courts can renounce their powers and the repercussions of making the Registrar the ultimate forum for such a declaration.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2018 International Trademark Association