Digital Era Trademark Revolution: Mastering the New Rules
KAMDHENU VS. REGISTRAR OF TRADEMARKS
(DECIDED ON 06.07.2023)
In this case, 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 of Trademarks, on the ground that the Appellant failed to provide evidence of the well- known status of the mark by way of an Affidavit. Later on, the Appellant filed the appeal, before the Intellectual Property Appellate Board, challenging the impugned order dated 23rd April 2019 passed by Registrar of Trade Marks, New Delhi, which was, later on, transferred to Delhi High Court.
- Details of Case In the current matter, Kamdhenu Ltd. was an entity with diverse interests spanning paints, steel, and dairy products, sought to elevate the standing of its brand / trademark “KAMDHENU” by securing the coveted well-known status. The company believed that this recognition would afford additional protection and privileges. In line of its belief, Kamdhenu took the proactive step of applying for inclusion in the official list of well-known trademarks, setting the stage for a legal clash with the Registrar of Trademarks.
- Appellant claims The Appellant claimed to have filed and registered several trademarks, including copyright registrations for the mark ‘KAMDHENU’ under various classes. The Appellant further asserted that it has a dealership network of over 8500 dealers and produces 25 lakhs metric tons of steel bars and structural steels annually. In view of the enormous goodwill which it enjoys, and its diversification into various businesses, the Appellant intended to seek well- known status and accordingly filed a Trademark Application before the Registry seeking a declaration as a ‘well-known mark’ under Section 11(8) of the 1999 Act and Rule 124 of the 2017 Rules. However, by the impugned order, the Application for inclusion in the list of well-known trademarks was rejected by the Registrar of Trademarks.
The Counsel for the Appellant submitted that the Registrar’s approach was totally erroneous, being the rejection of the Application simply on the ground of non-filing of evidence by way of an affidavit. It was submitted that under Rule 124 of the 2017 Rules, it is not mandatory for the Applicant to file evidence only by way of affidavit. The Appellant had filed several documents in support of their claim for well-known status for its mark ‘KAMDHENU‘. It was also submitted that if documentary evidence is filed, as in the present case, the same should be sufficient for compliance with Rule 124 of the 2017 Rules, and same ought to be examined by the concerned Registrar. At the last, it was submitted that the non-filing of an affidavit could be considered as a curable defect and it did not deserve rejection.
Judgement delivered by High Court
After considering all the submissions, the Delhi High Court held that in order to get a recognition of well-known status of a trademark, affidavit by way of evidence cannot be held to be a mandatory requirement for grant of well- known status under the Trademark Act, 1999 and the Trademark Rules, 2017. However, documentary evidence would be required.
It was also held that if the Registrar is of the opinion that any particular documents need to be supported by way of an affidavit, the Registrar can always give an opportunity to the applicant to file such an affidavit rather than rejecting an application in a completely summary manner. The non- filing of the affidavit by way of evidence shall not be fatal to the application for determining well-known status. As per the Order, the Appellant was given an opportunity to file a supporting affidavit, and any further documents in support of its Application for grant of well-known status for its mark ‘KAMDHENU’ and the matter was decided in favor of the Appellant.
In a Nutshell, the judge’s ruling challenged the conventional belief that Affidavits were the exclusive gold standard for proving a brand’s well-known status. Emphasizing that a diverse range of documents could effectively narrate the story of a brand’s recognition, the verdict validated Kamdhenu’s presentation of market data, news coverage, sales performance, and social media metrics as sufficient to establish the well-known status of their brand.
In the records of legal history, the Kamdhenu vs. Registrar of Trademarks case stands as a testament to the dynamic evolution of trademarks law, which is going beyond the conventional practices of law, redefining the criteria to determine the Well-known status of the trademarks.
Now you would be thinking how to get the status of a well-known trademark under the Trademarks Act, 1999 read with Rules and which forms need to be filed with the Registry of Trademarks to bring your trademark to the list of well-known trademark registrations in Chandigarh.
One can connect with Brij Agnihotri and Associates, Company Secretaries, Registered Trademark Agents, Registered Valuers (SFA) related to legal matters corresponding to the corporate realm. They can offer you assistance as well as guidance and services such as that of company secretary, as well as in matters pertaining to company incorporation, LLP registration, apart from trademark registration and trademark related compliances. You can connect to get the ‘™’ symbol which stands for applied trademark or the ‘R’ symbol which shows that your product or services are registered.
In today’s competitive era, where business knows no boundaries, Trademark registration has become a necessity for
- Sustenance,
- Growth and
- Excellence.
Now, entities are known to consumers by their
- Logos,
- Brand names and
- Taglines.
Benefits to Organizations
Trademark Registration benefits the organizations initially in building their markets and later on, by generating huge revenues, once they are stated in their balance sheets as Assets. When you affordable trademark services to your business, you are essentially protecting it from a third-party using it without your consent or authorization, and reaping benefits of your hard work. As your business grows, your uniqueness, whether it comes from minute details in your products or services, or in your logo, also begins to gain a lot of popularity.
