Well-Known Trademark List Not Immune From Rectification Proceedings: Bombay High Court

The Bombay High Court has held that the list of well-known trademarks is amenable to rectification proceedings. It cannot be insulated from challenge merely because it is maintained separately from the Register of Trade Marks.

Justice Arif S. Doctor, however, declined to entertain a petition seeking removal of the 'KEI' marks from the list. The judge held that the Delhi High Court was the more appropriate forum to decide the dispute.

"....though prior registration is not necessary for a mark to be recognised/declared as 'well known', once a mark is declared as a wellknown trade mark, any such mark is deemed to be registered under the provisions of the Act. It is for this reason that the list of well-known trade marks cannot be insulated from the jurisdiction under Section 57 and Section 125 merely because it is reflected in a separately maintained list from the Register of trade marks."

Raman Kwatra had approached the Bombay High Court seeking removal of the marks 'KEI' and its device mark from the Register and the list of well-known trademarks.

The dispute arose from an infringement and passing-off suit instituted by the proprietor of the KEI marks before the Delhi High Court in 2021. During the pendency of that suit, the proprietor applied for inclusion of the marks in the list of well-known trademarks. The application was allowed. The marks were subsequently entered in the list.

Kwatra thereafter moved the Bombay High Court challenging the inclusion of the marks in the list of well-known trademarks.

The Registrar of Trade Marks opposed the petition at the threshold. It argued that the list of well-known trademarks was distinct from the Register maintained under the Trade Marks Act. According to the registrar, the appropriate remedies were either an appeal against the inclusion of the marks in the list or an application before the registrar seeking their removal.

Justice Doctor rejected the objection.

The court held that once a mark is declared well-known, it carries the statutory consequences that apply to a registered trademark.

"It is, to my mind, clear that once a mark is declared well-known, the said mark has all the trappings of a registered trade mark.This is apparent from Section 11(8) of the Act, which expressly provides that once a mark is determined to be well-known, “the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.” It is therefore clear that the declaration of a mark as well-known carries with it all the statutory consequences, which would follow and apply to a registered trade mark. "

The court observed that a declaration of a mark as well-known carries statutory consequences under the Trade Marks Act. It therefore found no merit in the contention that entries in the list of well-known trademarks fall outside the scope of rectification proceedings.

The court also rejected the contention that an appeal constituted an effective alternative remedy.

Justice Doctor observed that declaration of a mark as well-known is effected through publication and not through an adjudicatory process culminating in a reasoned order. In such circumstances, there may be no order capable of being tested in appeal.

"The Petitioner's contention that the remedy of Appeal would in most cases be illusory is, in my view, well founded."

Having upheld the maintainability of the petition, the court turned to the objection based on forum conveniens.

Justice Doctor noted that an infringement and passing-off suit involving the same marks had already been instituted before the Delhi High Court. It was of the opinion that issues relating to infringement, goodwill, and use of the marks could overlap in both proceedings.

The court further recorded that both Kwatra and the proprietor of the KEI marks carried on business within the territorial jurisdiction of the Delhi High Court. The registrations of the impugned marks had been granted by the Trade Marks Registry in New Delhi. The well-known trademarks section of the Registry had also been transferred to New Delhi.

The court observed that where common or substantially overlapping issues arise in parallel proceedings, courts should, as far as possible, adopt a course that avoids multiplicity of proceedings and conflicting decisions.

Justice Doctor also rejected the contention that the Trade Marks Act, being a self-contained code, excluded consideration of forum conveniens.

"In my view, what is of overarching significance and importance is to, as far as possible, ensure that a situation which could potentially give rise to conflicting decisions is avoided."

The court therefore upheld the preliminary objection based on forum conveniens. It declined to entertain the petition and held that Kwatra was at liberty to take appropriate steps before the Delhi High Court.