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Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet,
Chennai-600 018.
Tele No: 24328902/03 Fax: 24328905 mail I’d: [email protected]
Website: http://www.ipab.gov.in
SR.NO.61/2017/TM/MUM
TUESDAY, THIS THE 25 TH DAY OF, 2020
HON’BLE SHRI JUSTICE MANMOHAN SINGH CHAIRMAN HON’BLE DR. ONKAR
NATH SINGH TECHNICAL MEMBER (PVPAT)
1. NOKIA CORPORATION.,
KARAPORTTI 3, 02610 ESPOO, FINLAND
…APPLICANT/APPELLANT (Represented by: Mr. Neeraj Grover )
Versus
1. THE REGISTRAR OF TRADEMARKS
TRADEMARK REGISTRY BOUDHIK SAMPADA BHAVAN, ANTOP HILL, S.M.
ROAD, MUMBAI – 400 037
…RESPONDENT
(Represented by – None )
ORDER
HON’BLE SHRI JUSTICE MANMOHAN SINGH, CHAIRMAN
1. The appellant has filed the present appeal under Section 91
of the
Trademarks Act, 1999 arising out of the Order dated 27th
March, 2017
passed by Registrar of Trade Marks, Trade Marks Registry,
Mumbai,
thereby not allowing the Request for incorporating the mark
NOKIA in
the list of “Well Known Marks” in exercise of powers as
mentioned under
Section 11 (6) of The Trade Marks Act, 1999)
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2. The Representation was filed by the Appellant on 5th
June,
2014 before the Learned Controller of Patents, Designs and
Trademarks
for inclusion of Nokia in the list of Well-known marks as
maintained by
the Trademarks Registry. The said representation was disallowed
by
virtue of the impugned order by the Registrar of Trade Marks, at
Trade
Marks Registry, Mumbai. The Registrar and/or the Committee
constituted (as mentioned in the impugned order) while
adjudicating the
representation for determining the trade mark NOKIA as a
well-known
mark has erroneously not relied upon the court order which
sufficiently
states and recognizes the trade mark NOKIA as a well-known trade
mark.
The Registrar has issued the order rejecting the application
stating that in
order to consider a trade mark to be a well-known, there must be
a court
order which determines the mark to be a well-known trade mark.
The
impugned order reflects blatant rejection of a prevailing court
order which
recognizes the trade mark NOKIA as a well-known trade mark.
Additionally, the Registrar issued the impugned order without
providing
any opportunity of being heard to the Appellant to present their
case and
has thus failed to exercise its discretionary powers judiciously
and against
the principles of natural justice.
3. No counter affidavit has been filed by the respondent who
failed to
appear before us. Urgent request is made to hear the appeal. The
same
request was allowed.
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4. Brief history and global launch of the Nokia
brand as per the of the appellant the submissions are
as under:-
a) The trademark NOKIA was coined and adopted by the
predecessors of the Appellant way back in the year 1865. Due to
the
nature of the mark NOKIA which is an arbitrary mark and has
no
reference to any attribute of any product/service whatsoever.
The
inherently distinctive trade mark NOKIA has been adopted both as
a trade
name as well as a trade mark and service mark by the Appellant.
Since its
adoption, the Appellant’s expanded the use of the trade mark
NOKIA on
and in connection with a wide variety of products ranging from
paper,
rubber boots, tyres, power generation, cable and electronics
business to its
now famous connectivity and mobile devices related business. The
year
1963, marked the Appellant’s first foray into
connectivity/telecommunications business when it started
developing
radio telephones for the army and emergency services. b) The
Appellant has also been an innovator and pioneer in the
telecommunication industry. In the year 1982, the Appellant was
the first
to introduce the car phone – the Mobira Senator. The world’s
first GSM
mobile call was made in 1991, using NOKIA equipment. The
Appellant
was a key player in developing the GSM technology widely in use
all
across the world and was instrumental in the “Mobile Phone
Revolution”
which has benefitted the whole world in an unprecedented manner
in last
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two and a half decades. The Appellant commercially launched its
first
handheld GSM phone, the NOKIA 1011 in 1992. The world’s
first
satellite call was also made using a NOKIA GSM handset in 1994.
True
copies of the documents that show the history of the mark Nokia
are being
filed in these proceedings.
c) Since the adoption of the trademark NOKIA, the
Appellant has spent tremendous time, effort and money in
promoting,
publicizing and popularizing the same in respect of a diverse
range of
goods & services. Any reference to the trademark NOKIA in
respect of
any goods is indicative of the Appellant’s source of manufacture
or some
connection with the Appellant. In consequence of the prior,
long,
continuous and extensive use of the trademark NOKIA on the part
of the
Appellant, the said trademark has acquired worldwide
tremendous,
enviable and unreachable reputation and goodwill amongst the
purchasing
public and the members of the trade and by virtue of the same,
the mark
NOKIA is today exclusively associated with the Appellant. True
copies of
the documents that show the advertisement and promotions carried
on by
the Appellant are being filed in these proceedings.
d) Today, the Appellant is not only one amongst the
leaders in the field of telecommunication but also in other
cutting-edge
technologies like, inter alia, wireless connectivity, audio,
imaging,
sensing, employing over one hundred thousand (100000) of people
around
the world and being present in over 140 countries. The
pioneering ability
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of the Appellant can be gauged from the fact that way back in
2005 the
Appellant had already sold its billionth mobile phone. As a
result, the
Appellant acts as a driving force within its industry. The
Appellant,
directly or via its authorized licensees, provides user-friendly
and
innovative technology and mobile devices, and related products
that
incorporate graphics, games, media and business applications to
enrich
people's communication experience and in addition to
supplying
equipment, solutions and services to network operators and
consumers at
large. In addition to its Digital Media business
(www.ozo.nokia.com),
Nokia has also entered the Digital Health business with the
acquisition of
Withings (www.withings.com) in May 2016.
e) The success of the Appellant is evident from the fact
that the Appellant today employs over one hundred thousand
(100000) of
people all over the world, including India and has active
offices and
operations in most of the countries worldwide, including India.
The
Appellant’s annual turnover runs into billions of Euros today.
The
Appellant has earned enviable reputation and goodwill in its
well-known
mark NOKIA.
f) The Appellant has acquired statutory rights (in
addition to the common law rights) for exclusive use of the
trademark
NOKIA by virtue of registration(s) of its well-known trademark
NOKIA
in diverse classes in almost all the major jurisdictions of the
world. The
Appellant is the registered proprietor of a number of trademarks
in India.
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A list of all of the registrations of the Appellant in numerous
countries
worldwide is being filed in the present proceedings.
5. GROWTH OF THE NOKIA BRAND
We have gone through the entire records and it reveals as
under:-
a) Documentary evidence highlighting the growth of the
NOKIA globally is being filed in these proceedings. By way of
example,
the NOKIA brand is now famously attached to, and well-known for,
its
connectivity devices and services, mobile devices,
audio/video
innovations, merchandising and memorabilia and much more.
b) Nokia’s Trade Mark Portfolio Nokia is an internationally
reputed, well-established and well-known manufacturer and
marketer of,
inter alia, connectivity/telecommunication and audio/video
equipment
sold under the famous trade mark NOKIA. The mark NOKIA is
protected in about 200 jurisdictions worldwide. A list of
Appellant’s trade
mark registrations in numerous countries of the world for NOKIA
is being
filed in these proceedings. The trade mark NOKIA is
inherently
distinctive in relation to the Appellant’s goods and services
globally. Such
distinctiveness has been heightened by the exclusive, extensive
and
continuous use of the mark NOKIA globally and in India across a
vast
range of goods and services.
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c) That in order to protect its rights in and to the trade
mark
NOKIA in India, the Appellant has acquired the following trade
mark
registrations in India as per the following details:
S. No. Trademark Reg. No. Date of Reg. Class
1 NOKIA 993281 27th
Feb, 2001 25
Goods:
Articles of clothing for men, women and children, shirts,
t-shirts,
sweatshirts, sweaters, vests, pants parkas, jackets, overcoats,
raincoats,
hats, caps, mittens, gloves, socks, headbands, boots, shoes,
slippers,
neckties, aprons, bathing suits, bathing trunks, bathrobes,
belts, blouses,
bow ties, boxer shorts, dresses, ear muffs, garter belts, gym
shorts, gym
suits, jogging suits, sportwear, night shirts, pocket squares,
vests, robes,
sleep wear, sun visors, and wrist bands.
2 NOKIA 494897 26th July,1988 7
Goods:
Conveyors Belts And Tracks Power Transmission Belts, Other Than
For
Engines Of Land Vehicles Rubber Bumpers, Roll Coatings All
Afore
Mentioned Goods Being Parts Of Machines Machines For
Manufacture
Of Tubes And Sheets Machines For The Manufacture Of Cables
Machines For The Manufacture Of Optical Fibers, Extruders,
Industrial
Robots Precision Castings And Mechanical Components For
Electrical
Equipment.
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3 NOKIA 466090 14th January,1987 9
Goods:
Televisions, monitors, video tape recorders, satellite
receiving
equipment, radio speakers, radio telephones for land or maritime
use,
radio transmitting and receiving apparatus, electronic apparatus
for
scrambling (encoding) voice transmissions, electronic data input
and
output apparatus for use in vehicles or together with radio
telephones,
digital transmission equipment and digital switching
equipment,
dedicated communication networks, telephone exchanges, data
processing machines, cash registers , modems multiplex
equipment
electrical conductors wiring harnesses, covered electric wire
electric
cables and wiring ducts for electric conduits capacitors
electrical coils
and resistors optical fibers and cables safety gloves
thermostats and
controls for heating house parts and fitting included for all
the aforesaid
goods.
4 NOKIA 1237570 17th September, 2003 35
Goods:
Advertising, business management, business administration,
office
functions, retail services, leasing and franchising being
services included
in class-35.
5 NOKIA 1237569 17th September, 2003 36
Goods:
Insurance, financial affairs, monetary affairs, real estate
affairs all being
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services included in class-36.
6 NOKIA Care 2128443 11th April, 2011 37
Goods:
In Respect Of Repair; Installation Services; Installation,
Maintenance
And Repair Of Electronically Operated Apparatus, Mobile Phones,
Smart
Phones, Hand Held Computers, Computers, Personal Digital
Assistants,
Electronic Organizers, Mobile Phone And Smart Phone Accessories,
And
Electronic Notepads; Information, Advisory And Consultancy
Services
7 NOKIA 1237568 17th September, 2003 38
Goods:
Satellite, telephone telegram telex facsimiles and e-mail
communication
services , telephone communication and global computer and
communication networks services including services for transfer
or
handling of voice, data, images and / or video, services of
data
communication network and global computer and communication
networks, operation and administration of telecommunications
networks/systems, network management systems, network planning
call
statistic and billing services, radio broadcasting services
telecommunications consultancy and information services.
8 NOKIA 1566635 08th
June, 2007 39
Goods:
Navigation services; providing mapping, navigation traffic,
travel, public
transport, recreational services and point of interest
information, all via
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telecommunication networks, wireless local area networks,
mobile
telephone and communication equipment, wireless navigation
devices
and hand held computers.
9 NOKIA 1237567 17th Sep, 2003 41
Goods:
Education within data/satellite and communications area,
providing
training on the subject of communications systems and devices
including
network planning, network managing, operation and
maintenance,
telecom services, entertainment, publication of books,
newspapers and
magazines, on-line publications, all being services included in
class - 41.
10 NOKIA 1237566 17th Sep, 2003 42
Goods:
Basic and applied research within physics, chemistry,
engineering,
computer programming and telecommunications, computer
programming, design and development of digital
telecommunications
systems for public and private networks, rental and leasing of
data
processing programs, telecommunication networks and
telecommunications apparatus, providing consultation and
information in
the field of telecommunications included in class 42.
11 NOKIA 1364898 17th June, 2005
14, 16,
18 and 28
Goods:
Class: 14 precious metals and their alloys and goods in precious
metals
or coated therewith not included in other classes; jewellery,
precious
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stones, horological and other chronometric instruments.
Class:16 paper, cardboard and goods made from these materials,
not
included in other classes; printed matter; bookbinding
materials;
photographs; stationery, adhesive materials stationery or
household
purposes; artists materials, paint brushes; typewriters and
office
requisites (except furniture); instructional and teaching
material (except
apparatus); plastic materials for packaging (not included in
other classes);
printers type; printing blocks.
Class: 18 leather and imitations of leather, and goods made of
these
materials and not included in other classes; animal skins,
hides; trunks
and travelling bags; umbrellas, parasols and walking sticks;
whips,
harness, saddlery.
Class:28 games and playthings; gymnastic and sporting articles
not
included in other classes; decorations for Christmas trees.
d) The aforementioned registrations have been renewed from
time to time and are valid and subsisting. The Appellant also
craves leave
to rely upon the registrations granted by the Registrar of
Trademarks in its
favor as may be pending at the time of filing of the present
appeal. The
aforementioned registrations vest in the Appellant the exclusive
right to
use the same upon or in relation to the goods manufactured or
services
rendered or with their consent. True copies of the registration
and/or
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renewal certificates for the aforementioned registrations are
being filed in
these proceedings. The Appellant, by nature of its business, has
diverse
interests and over a substantially long period of time, used the
mark
NOKIA for diverse goods and services.
e) Nokia’s Domain Name Registrations That the Appellant is
the owner of the NOKIA domain names, under both the generic
top-level
domain (TLD) “.com” (in the English language and vernacular) and
under
the respective country code top-level domains in over 60
countries all
over the world. The Appellant is also the owner of the new
gTLD
“.NOKIA”. The Appellant first registered the domain name
www.nokia.com in July 1991 and has consistently renewed the
registration of this domain name since then. Every week,
approximately
19 to 20 million people visit or “hit” Appellant’s www.nokia.com
web
site. On www.nokia.com, the Appellant provides information about
a
wide variety of goods and services including but not limited to
the
NOKIA-branded cameras, mobile phones, tablets and related
accessories,
as well as information for their services. In order to customize
the user
experience, the Appellant has dedicated websites to every
country. For
example, the Appellant is the owner of www.nokia.in which due to
the
TLD .IN shows the Appellant’s interest to maintain an India
specific
website and which gives the Indian consumers information and
assistance
about NOKIA-branded goods and services of the Appellant. True
copies
of WHOIS records showing the ownership of the domain names as
well as
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extracts from the abovementioned websites are being filed in
these
proceedings.
f) Nokia’s Common Law Rights That in addition to the
statutory rights mentioned above, the Appellant has also
acquired
common law rights in and to the mark NOKIA. Such common law
rights
have accrued to the benefit of the Appellant owing to the
extensive,
exclusive, continuous and long-running use of the mark NOKIA in
India
and around the world.
g) The popularity, success and well known status of the
NOKIA brand is amply evidenced by the fact that in 2010, the
Appellant
was still the 8th Best Global Brand; up to 2012, the Appellant
was in the
top 20 Best Global Brands, and since 2014 the Appellant has,
inter alia,
launched the Nokia N1 tablet and the multi-awarded Nokia OZO
virtual
reality camera, acquired the Americano-French company
ALCATEL-
LUCENT and the successful wearables company WITHINGS and has
entering into a worldwide Brand Licensing deal with HMD Global
Oy for
Nokia-branded phones and tablets. As further evidence thereof,
the latest
Nokia smartphones (Nokia 6) was sold out within minutes in China
when
it launched earlier this year. This was reported widely and even
in India.
True copies of documents evidencing the above are being filed in
these
proceedings.
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h) The Appellant’s mark NOKIA till recent times has
continuously featured among top 10 valuable global brands in
Interbrand /
Business Week’s Best Global Brands list from the year 2000
onwards.
Interbrand is a full-service branding consultancy and Best
Global Brands
is one of the top published business ranking in the world. True
copies of
annual ranking of the Applicant amongst best global brands since
the year
2000 are also being filed in the present proceedings.
i) In addition it is humbly submitted that the Hon’ble Delhi
High Court has held that NOKIA is a well-known trademark. The
said
observation was made by Hon’ble Justice Kailash Gambhir in a
Dasti
order and/or Contempt order in the matter of Nokia Corporation
and Ors.
V. Movie Express and Ors. (under suit number CS(OS) 286/2012).
The
Hon’ble High Court has passed an interim ex-parte injunction
against the
said defendants. A true copy of the said order is being filed in
the present
proceedings.
j) The Appellant also has a record of successful enforcement
of
its rights in and to the mark NOKIA in a number of jurisdictions
world-
wide. In this regard, the Appellant would like to draw the
attention of the
Hon’ble Court to the list of decisions in various jurisdictions
around the
world, wherein NOKIA has been held “well-known”.
Taiwan:
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Intellectual Property Office Decision of the Trademark
Opposition No.
G00911984 of March 28, 2003. NOKI &device No. 01025742;
Decision of the TIPO June 21, 2007. ROCKIA No. 01198046;
Decision of the TIPO July 6, 2007. ROCKIA No. 01211263.
Greece:
Trademarks Administrative Commission Decision No. 6324/2004
of
August 8, 2001. NOKIA No. 137774.
Romania:
Commission for Re-examination of Trademarks Decision No. 228
of
September 10, 2002. NOKIO No. 39962.
Decision of the State Office for Inventions and Trademarks
October 31,
2006. NOKI No. 850634.
Indonesia:
Supreme Court of Republic of Indonesia Court of Cassation
Decision No.
044/N/HAKI/2003 of March 24, 2004. NOK IIA No. 493286.
Benelux:
Judgment of the Appeal Court of Hague June 15, 2006. NOKTA
TELECOM No. 723324.
Judgment of the District Court of Hague KG 05/508 of June 8,
2005.
NOKTA No. 723324.
Hong Kong:
Judgment of the Department of Intellectual Property December 10,
2004.
AKIA No. N/14116.
Turkey:
Turkish Patent Institute Decision B.14.1.T.P.E.0.06.01/422 July
7, 2005.
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Czech Republic:
Decision of the Chairman of the Patent Office August 30, 2006.
NOKA
No. 343997;
Decision of the Industrial Property Office November 20, 2006.
NOKI No.
850634;
Decision of the Industrial Property Office November 12, 2007.
NOKI No.
439002.
Lithunia:
Solution of the Republic of Lithuania State Patent Bureau
Section of
Appeals 11, 2006. NOKI No. 850 634.
China:
Decision of the Trademark Office April 9, 2008. NOKIA &
NOKIA
(CNchr) No. 4019515.
Finland:
Decision of the National Board of Patents and Registration June
12, 2008.
List of TMs with Reputation No. 2007014.
Bulgaria:
Decision No. 35-OM of the Patent Office of the Republic of
Bulgaria of
15 September 2008.
Some of the WIPO Decisions wherein NOKIA has been held a
“well
known” mark:
Nokia Corp. v. Mr. David Wills, Case No. DWS2001-0004 (WIPO
Feb.
25, 2002);
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Nokia Corp. v. UdayLakhani, Case No. D2000-0833 (WIPO October
19,
2000);
Nokia Corp. v. Private, Case No. D2000-1271 (WIPO Nov. 3,
2000);
Nokia Corp. v. United Digital, Case No. D2001-1176 (Dec. 19,
2001);
Nokia Corp. v. Nokia Ringtones and Logo Hotlines, Case No.
D2001-
1101 (Oct. 18, 2001);
Nokia Corp. v. Nick Holmes, Case No. D2002-0001 (WIPO Mar.
6,
2002);
Nokia Corporation v. Marlon Sorken, Case No. D2002-0276 (WIPO
May
8, 2002);
Nokia Corp. v. Wavesmultimedia, Case No. D2002-0130 (June 24,
2002);
Nokia v. Nokina Decision No. (2002) TM OPP 00917 (China,
September
02, 2002)
Nokia Corp. v. Horoshiy, Inc. and LaPorte Holdings, Case No.
D2004-
0851 (WIPO Dec. 31, 2004);
Nokia Corp. v. DurmusDalda, Case No. D2006-0931 (WIPO Sept.
11,
2006);
Nokia Corp. v. Oeistaemoe, Case No. D2007-1738 (WIPO Jan. 21,
2008);
Nokia Corp. v. Beadle, Case No. D2008-0218 (WIPO April 9,
2008);
Nokia Corp. v. Juha Vainio, Case No. D2008-0772 (WIPO July 8,
2008);
Nokia vs. ANOKING (Philippines, October 16, 2012)
NOKIA vs. NOKYALIGHTING (South Korea, 24.12.2014, Cl. 35);
and
NOKIA vs. AIKON PHONE (Spain, Cl. 9; 11.03.2015)
NOKIA vs. NOVIA PARK (Turkey; 17.03.2016)
NOKIA vs. NOVIA PAZAR (Turkey; 29.02.2016)
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NOKIA vs. NOJIA (China; 26.01.2016)
NOKIA vs. NOKE (China; August 2016)
NOKIA vs. NOKAE (Madrid, April, 2017)
True copies of the decisions that held the mark NOKIA as
well-known are
also submitted in the present proceedings.
BRIEF FACTS REGARDING THE SUBJECT REPRESENTATION
AND THE PRESENT APPEAL.
6. Admittedly the Appellant had filed a request by way of
representation on 05.06.2014 (hereinafter referred to as the
“Request”)
before the Controller General of Patent, Designs and Trade
Marks, at
Mumbai for incorporation of the mark NOKIA in the list of
“Well-known
Marks” in exercise of powers as mentioned under Section 11(6) of
the
Trademarks Act, 1999.
7. The said request was filed by the appellant had filed the
said
request by virtue of the provision of Section 11(8) of the
Trademarks Act,
1999. The Appellant had relied on ex-parte interim order as
passed by the
Hon’ble Delhi High Court in the matter of NOKIA CORPORATION
and
Ors. V. Movie Express and Ors. (under suit number CS(OS)
286/2012).
8. By virtue of provision of Section 11(8) of the Trademarks
Act, 1999 ‘if a trademark is determined to be well-known in at
least one
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relevant section of the public in India by any court or
Registrar, the
Registrar shall consider that trademark as a well-known
trademark for
registration under the Act’. Additionally, it is humbly
submitted that
Section 11 of the Trademarks Act, 1999 states that while
determining a
mark as a well-known trade mark, the Registrar may rely on any
of the
facts/conditions mentioned therein in Section 11 (6) of the
Trademarks
Act, 1999. Section 11 (6) (v) of the Trade Marks Act, 1999
specifically
states that, ‘the record of successful enforcement of the rights
in that
trademark in particular, the extent to which the trademark has
been
recognized as a well-known trademark by any court or Registrar
under
that record’. Hence it is humbly submitted that Section 11(8)
read with
Section 11 (6) (v) of the Trademarks Act, 1999 clearly lays down
a
mandatory condition to record a trade mark as a well-known trade
mark,
provided the mark has been held to be a well-known trade mark by
a
Court.
9. The Appellant had also filed a follow up letter under cover
of
letter dated 31.08.2015 along with requisite documents
requesting for
adjudication of the aforementioned request to enlist the
trademark
NOKIA in the list of well-known marks in India.
By virtue of an order dated 27.03.2017 the Ld. Registrar of
Trademark had disallowed the said request for inclusion of the
mark
“NOKIA” in the list of well-known marks in India. The impugned
order
as issued by the Trademarks Registry, Mumbai is also filed in
the present
proceedings.
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10. That the Impugned Order is liable to be set aside as the
same
is in violation of the principles of natural justice. Given the
fact that all
the necessary documents in order to support the Appellant stands
for
inclusion of “NOKIA” in the list of well-known marks and the
same were
submitted by the Appellant along with the Representation.
However, none
of the said documents were taken into consideration prior to
issuance of
the impugned order. The Impugned Order has been passed in a
most
casual manner without looking into the true facts and background
of the
matter by the Respondent. No opportunity has been provided to
the
Appellant to be heard while adjudicating the representation and
no
consideration has been given to the supporting documents filed
by the
Appellant.
11. The Impugned Order has been passed without application
of
mind. It is a settled proposition of law that where a trademark
has been
determined to be well-known in at least one relevant section of
the public
in India by any Court or Registrar, the Registrar shall consider
that
trademark as a well-known trademark for registration under the
Act.
12. It is evident from the documentary evidence and
supporting
documents submitted along with the Representation that the said
mark
“NOKIA” is entitled to be included in the list of well-known
marks in
India by virtue of Section 11(8) of the Trademarks Act.
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The Respondent neither served a notice upon the
Appellant nor provided any opportunity to the Appellant and
disallowed
the representation for inclusion of the mark “NOKIA” in the list
of well-
known marks in India. The Appellant have not been provided with
an
opportunity of being heard prior to passing of the Impugned
order. Hence
the said Order is based on conjectures, surmises and
presumptions which
are absolutely contrary to the record. Therefore, it cannot be
considered
that the Respondent has acted in a just and fair manner prior to
passing the
Impugned order.
13. It appears to us that the Impugned Order has passed
without
following principal of natural justice, and in contravention of
the
mandatory provisions of the law.
14. It was the duty of the respondent to peruse the
supporting
documents filed by the Appellant along with the representation
by which
it is clearly evident that the Appellant’s mark NOKIA is
entitled to be
included in the list of well-known marks as maintained by the
Indian
Trademarks Registry. The Respondent should have provided an
opportunity to the appellant to satisfy the respondent.
15. ‘Tata Sons Ltd. Vs. Manoj Dodia and Others - 2011 ((46)
PTC 244 (Del))’
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The Court held that well known trademark is a mark which is
widely
known or recognized by the relevant general public. The Court
referred to
Article 6bis of Paris Convention, 1967 and also Article 16 of
TRIPS
Agreement 1994. The Court observed that as per Article 16 of
TRIPS
Agreement 1994, in determining whether the trademark is well
known,
the members shall take account of the knowledge of the trademark
in
relevant sectors of the public, including knowledge in the
member
concerned which has been obtained as a result of the promotion
of the
trademark. India became a signatory of the TRIPS Agreement in
the
year 1994.
16. The paragraphs 5, 7, 8, 9, 12 and 13 of the following
judgement
will help the case of the appellant :-
‘Texmo Industries v Taxmo Aqua Engineering India Private Limited
and
Others - C.S. No. 50 of 2017 by Madras High Court’
17. The Hon’ble Delhi High Court, vide the judgement dated
21.08.2017 in the Suit No. CS (OS) 1694/2015 titled as Nokia
Corporation vs. Manas Chandra & Anr., again held the
trademark
“NOKIA” to be a well-known mark as per Section 29(4) of the
Trade
Marks Act, 1999. Accordingly, the Appellant filed a
miscellaneous
petition dated 29th August 2017 (1st MP) for bringing the said
judgement
on record.
18. It has been held by the Hon’ble High Court of Bombay in the
case
of Agar Distributors and Ors. Vs. Intellectual Property
Appellate Board
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23 | P a g e
and Ors. (29.04.2011) (2011(4)ALLMR403), that this Appellate
Board is
empowered to take additional documents on record as
contemplated
under Order 41 Rule 27 of the Code of Civil Procedure, 1908.
Therefore,
the judgements dated 21.08.2017 and 03.11.2017 of the Delhi
High
Court in the above-mentioned cases may be considered and taken
on
record by this Hon’ble Board while adjudicating the present
appeal.
19. The Delhi High Court in Suit No. CS (OS) 1694/2015 titled
as
Nokia Corporation vs. Manas Chandra & Anr, vide the
judgement dated
21.08.2017 in para 10 held as follows- “…the Plaintiff’s mark
NOKIA is
recognized as a well known trade mark and as per the provisions
of
Section 29(4) of the Trade Marks Act, 1999 and the trade mark
NOKIA
is entitled to protection across all goods”
20. That the Delhi High Court in the Suit No. CS(OS) 286/2012
titled
as Nokia Corporation and Ors. Vs. Movie Express and Ors., vide
the
judgement dated 03.11.2017 in para 24 held as follows- “…
the
Plaintiff’s mark is thus a well known registered trade mark and
has
repute in India. The use of the mark by the Defendants is
without any
due cause and is detrimental to the distinctive character of the
Plaintiff’s
highly distinctive, well-known and registered mark. In such
circumstances too the Plaintiff is entitled to seek the benefit
of the
statutory provisions of Section 29(4) read with Section 29(7),
(8) and (9)
of the Trade Marks Act. None should be continued to be allowed
to use
a world famed name to goods which have no connection with the
type of
goods which have generated the worldwide reputation.”
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24 | P a g e
The Court considered the various parameters provided under
Sections (6) and (7) of the Trademarks Act, 1999 that are to be
taken into
consideration by the Registrar of Trade Marks in declaring a
trademark as
a well-known mark The Court observed that the parameters
revolve
around the recognition of the trademark in the relevant section
of the
public, in short the reach and exposure that the mark has among
the
relevant section of the public.
21. Thus, in view of above, the impugned order is in
contradiction to
the settled judicial principles and against the purpose of
Trademarks Act
which is to accord protection to the honest and bonafide
proprietors of a
mark such as the Appellant in this case.
22. The impugned order dated 27th March, 2017 passed by
Respondent
no. 1 is, therefore, set-aside as the impugned order is passed
without
application of mind and against the law.
23. The appellant’s representation/application is allowed. It is
declared
that NOKIA is well-known trade mark in India also.
24. The appeal is allowed. The respondent is directed to publish
that
NOKIA is a well known trademark.
25. No costs.
-Sd/- -Sd/- (Dr. Onkar Nath Singh) (Justice Manmohan Singh)
Technical Member (PVPAT) Chairman
Disclaimer: This order is being published for present
information and should not be taken as a certified copy issued by
the Board