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Reference to larger bench of question whether court can declare mark as well-known
In the civil suit Texmo Industries v. Mr. Roshan Kumar, C.S. No. 357/2017, while rendering a summary judgment (dated 2018.7.27) partially decreeing the suit, a Single Judge of the Madras High Court (Karthikeyan, J.), has referred to a larger bench the question of a Court’s competence to declare a trade mark as a ‘well-known trade mark’.
The plaint averred the Plaintiff as being the owner and registered proprietor of the trade mark TEXMO and formative marks for motor pump sets in various classes including classes 2, 7, 11, 22, 23, 24, 25 and 26. The suit was for, inter alia, trademark infringement and passing off, against Defendant’s use of the mark TEXMEN for identical goods. After granting an initial interim injunction, the Court has allowed Plaintiff’s motion for summary judgment for various reliefs. In relation, however, to the relief of declaration of TEXMO as a well-known trade mark, the suit has been kept pending until a larger bench first decides a reference of the question – “whether the Court would be the appropriate authority for declaration of a mark as a well-known mark or is it only the Registrar who is empowered to declare so”.
The case involves the question whether the mention of the “Registrar” in Section 11(6) of the Trade Marks Act, 1999 – “The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account…including: …the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar…”, indicates that the Registrar is exclusively vested with the competence to declare a mark as well known, and that the Court is not so vested. Other notable related statutory provisions featuring further mentions of the “Registrar” include Section 11(7) – “The Registrar shall, while determining as to whether a trade mark is known or recognised…”, and Section 11(8) – “Where a trade mark has been determined to be well-known…by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”.
As regards the factors enumerated in Section 2(1)(zg) and 11(6) to ascertain whether a trade mark is well known or not, the Court has observed, subject to the decision of the larger bench, that – “They are factors which can be determined only by the Registrar of Trade Marks…the Court is not an expert on those lines and the court cannot substitute itself for the Registrar of Trade Marks who is the competent authority to examine the relevant statistics to declare that a mark is a well known mark….and thereafter it is the prerogative of the Registrar of Trademark to actually declare a Trademark as a well-known Trademark.”
The Plaintiff relied upon an earlier judgment dated December 11, 2017 of a coordinate bench (a Single Judge) of same Court (Madras High Court) in which the same mark TEXMO was declared as a well-known trade mark. Unpersuaded by this reliance, the Court while making the reference, has examined various statutory provisions appearing to it to indicate that the only authority conferred with such statutory competence is the Registrar of Trade Marks.
The Court has accordingly sought for the question to be decided by a Division Bench (larger bench of two Judges) and observed that – “since there had been earlier judgment of this court on this one issue namely whether the court can declare a mark as a well known mark or the court can only determine the factors relating to the mark as a well known mark and the onus is on the Registrar of trade marks to declare such mark as a well known mark, I hold is a matter to be referred to a Larger Bench.”