Evidence By Way Of Affidavit Not Mandatory When Documentary Evidence Sufficient For Determining Well-Known Status Of Trademark: Delhi High Court

The Delhi High Court has held that when documentary evidence is sufficient for determining the well-known status of a trademark, the filing of evidence by way of affidavit is not mandatory.

Justice Prathiba M. Singh considered the question about the nature of the evidence, and the documents required to be filed by an applicant for determination as a well-known trademark under Section 11 of the Trade Marks Act, 1999, read with Rule 124 of the Trade Mark Rules, 2017.

The court said the evidence would have to be substantially documentary in nature, which would establish contemporaneous and continuous use, reputation and goodwill.

The court noted that Rule 124 of the 2017 Rules uses the word "evidence and documents" and said the same could also include affidavits by way of evidence and other documents.

"However, it cannot be held that an affidavit would be mandatory, so long as there is sufficient evidence. A perusal of the word ‘evidence’ in the Act and 2017 Rules would show that evidence under Section 129 of the 1999 Act is to be given by affidavit. However, oral evidence can also be taken into consideration. Section 129 of the 1999 Act cannot be read to mean that evidence only means ‘oral evidence’ or ‘evidence by way of an affidavit’ as defined in Section 3 of the Evidence Act," said the court, adding the latter provision includes both oral evidence and documentary evidence.

The court said the nature of the determination by the Registrar would in any event entail filing of the documentary evidence, as mere affidavits by way of evidence without supporting documents may not even be sufficient to establish the well- known status of the mark.

"On the other hand, documentary evidence without an affidavit can still establish well-known status of the mark as the statement of case would be setting out the relevant description of the documents. Some documents could even be publicly acknowledged and verifiable documents. These documents may not require an affidavit to verify authenticity or genuinity. Some facts could be of such a nature that they could be placed only by way of an affidavit, and no documents may exist to support such facts. For example, reasons for adoption of a mark, manner of coining of mark, family history of use etc. Thus, there can be no hard and fast rule that an affidavit is mandatory."

Considering the legal position, particularly the Evidence Act and the Public Notice issued for inviting applications to recognize well-known trademark, the court held that in order for a determination 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 1999 Act and the 2017 Rules.

"However, documentary evidence would be required,” it added.

Analyzing the Trademarks Act and Rules, the court added that if the Registrar is of the opinion that any particular documents need to be supported by way of an affidavit, an opportunity can be given to the applicant to file such an affidavit rather than rejecting the 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. It could be at best a requirement which the Registrar could call upon the applicant to comply with, if the documentary evidence and the statement of case is not sufficient. If an applicant chooses to file affidavit by way of evidence as also the documents, that would also be permissible,” the court said further.

Justice Singh made the observations while allowing the plea moved by an entity Kamdhenu Limited challenging an order passed by the Registrar of Trade Marks rejecting its application to include the trademark ‘KAMDHENU’ in the list of well-known trademarks.

The Registrar observed that the entity failed to provide evidence of the well- known status of the mark by way of an affidavit.

Justice Singh observed that the Trademark Registry ought to have given an opportunity to the entity to file an affidavit by way of an evidence without going through the materials and documents which were filed with the application.

“Non-filing of the affidavit could not have resulted in the dismissal of the Application itself,” the court said.

It granted an opportunity to the petitioner entity to file a supporting affidavit and any further documents in support of its application for grant of well-known status for its mark ‘KAMDHENU’.

“These documents shall be filed before the Registrar of Trade Marks within 8 weeks. Thereafter, the Registrar shall afford a hearing to the Appellant, and decide the said application in accordance with law. All remedies, if any, are left open,” the court added.

Title: KAMDHENU LTD v. THE REGISTRAR OF TRADE MARKS

Citation: 2023 LiveLaw (Del) 564

Click Here To Read Order