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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: ipab.tn@nic.in 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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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.”

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