The Delhi High Court recently dismissed a writ petition by Tata SIA Airlines Limited (‘Petitioner’) seeking issuance of direction to the Ld. Registrar of Trade Marks (‘Registrar’) to include the Petitioner’s VISTARA mark in the list of well-known trade marks.
It was the Petitioner’s case that the VISTARA mark was declared well-known by this court in the case of TATA SIA Airlines Limited v. M/s. Pilot18 Aviation Book Store & Anr., CS(COMM) 156/2019 and subsequently, the Petitioner wrote to the Ld. Registrar to consider the decree passed by this court and include the VISTARA mark in the list of well-known trade marks. The Petitioner had also requested the Ld. Registrar to forego the requirement to file form TM-M along with prescribed fees as required under Rule 124 of the Trade Marks Rules, 2017, (‘TM Rules’). However, Ld. Registrar refused to entertain the Petitioner’s requested in any manner other than as prescribed under Rule 124 of TM Rules. The Petitioner, accordingly, filed this writ petition.
The Petitioner contended that, once a court order determines a mark to be well-known, Rule 124 of the TM Rules becomes redundant. The Ld. Registrar, on the other hand, submitted that while it will not re-determine if a mark is well-known once such an exercise is carried out by the court, the requirement to file a request in form TM-M along with prescribed fees under Rule 124 of TM Rules for inclusion of such a mark in the list of well-known trade marks is mandatory in nature.
The court held that, once a mark is declared well-known by the judicial order of a court, such declaration does not automatically entitle such marks to be included in the list of well-known trade marks maintained by the Trade Marks Registry. The court also observed that Rule 124 of the TM Rules was introduced to implement Section 11(8) of the Trade Marks Act, 1999, since the heading of relevant TM-M form reads as ‘Request for inclusion of a Trademark’ and not ‘Request for determination of a Trademark’. The court, accordingly, dismissed the writ petition and ruled that even after such a declaration, proprietor of such marks would be required to file a request in form TM-M along with prescribed fee as required under Rules 124 of the TM Rules for inclusion of such marks in the list of well-known trade marks.
Tata Sia Airlines Limited vs. Union of India W.P.(C)-IPD 64/2021