In a recent case[1] decided by the Intellectual Property Appellate Board (‘IPAB’), Nokia Corporation (‘Appellant’) had filed an appeal under Section 91 of the Trade Marks Act, 1999 (‘the Act’), against the Order dated March 27, 2017 (‘impugned order’), wherein the Registrar of Trade Marks (‘Respondent’) had refused the Appellant’s request to incorporate the trademark ‘NOKIA’ in the list of ‘Well-Known Marks’, in exercise of its powers as per Section 11(6) of the Act.
Background
The Appellant filed an application on June 5, 2014, before the Respondent for the inclusion of its mark, NOKIA, in the list of well-known marks as maintained by the Trademarks Registry in India. The Respondent refused the Appellant’s application and stated that a court order which determined that the trademark was a well-known trade mark was required.
In response to the Respondent’s rejection of its application, the Appellant submitted that the impugned order had blatantly disregarded a court order which had recognised the trade mark, NOKIA, to be a well-known trade mark. The Appellant also pointed out to the IPAB that it was not given the opportunity to be heard or to present its case, and thus the Respondent failed to exercise its discretionary powers judiciously.
Along with its application, the Appellant submitted extensive documentation and evidence of its global presence and market recognition since 1865. The mark, NOKIA, was adopted as a trademark for goods and services, which included a range of products such as paper, tyres, audio/video equipment, connectivity/telecommunication, and mobile devices, and the Appellant had since been regarded as a key player in the development of GSM technology.
As per the Appellant’s submissions, there was prior, long, continuous, and extensive use of trademark, NOKIA, which had acquired worldwide and tremendous reputation and goodwill amongst the purchasing public and traders, and was thus exclusively associated with the Appellant. In addition to being present in over 140 countries, having employed hundreds of thousands of people, and an annual turnover that ran into the billions, the Appellant had acquired statutory rights in 200 jurisdictions, as well as common law rights, for the exclusive use of its trademark in almost all major jurisdictions.
In India, the Appellant’s trademark was registered (and subsequently renewed) under classes 7, 9, 14, 16, 18, 25, 28, 35-39, 41, and 42, and it also claimed to be the owner of NOKIA domain names (generic and country code top-level domains) in over 60countries. The Appellant presented a record of successful enforcement of its rights over its mark, and recognition of it being a well-known mark in numerous jurisdictions, such as, Taiwan, Greece, Romania, Hong Kong, China, and Finland, as well as in World Intellectual Property Organisation (‘WIPO’) decisions.
IPAB’s decision
The Appellant requested the inclusion and incorporation of its mark as a well-known mark, by the powers vested with the Respondent under Section 11(6) and (8) of the Act. Section 11(8) read with Section 11(6)(v) of the Act lays down a mandatory condition to record a trademark as a well-known trademark, provided the same had been held to be a well-known trademark by a court. The Appellant relied on the ex-parte ad-interim order passed by the High Court of Delhi in Nokia Corporation & Ors v. Movie Express & Ors,[2] wherein the court held ‘NOKIA’ to be a well-known trademark, and the plaintiff was entitled to seek the benefit of statutory provisions of Section 29(4) read with Section 29(7), (8), and (9) of the Act.
The IPAB found that none of the documents submitted by the Appellant were taken into consideration prior to the issuance of the impugned order, and neither was any opportunity provided to the Appellant to be heard nor were the Appellant’s facts and background taken into consideration; the IPAB noted that the Respondent had failed to act in a just and fair manner.
It was evident, in the IPAB’s opinion, that the documentary evidence submitted read with the provisions of the Act, mandated that the mark ‘NOKIA’ be included in the list of well-known marks in India. The impugned order was passed without following the principles of natural justice and was thus in contravention of the applicable law.
Additionally, the IPAB made reference to Tata Sons Ltd. v. Manoj Dodia & Ors,[3] wherein the court held, in accordance with Article 16 of the Trips Agreements, 1994, that a well-known trademark was a mark that was widely known or recognised by the relevant section of the general public. The High Court of Delhi in Nokia Corporation v. Manas Chandra & Anr.,[4] reiterated that ‘NOKIA’ was a well-known mark as per Section 29(4) of the Act, and accordingly the Appellant filed a miscellaneous petition to bring the same on record in this case.[5]
The impugned order was found to be in contradiction to the settled judicial principles and against the purpose of the Act, which was to protect honest and bona fide proprietors of a trademark. The IPAB, thus, set aside the impugned order, and concluded that it had been passed without application of the mind and was against the law. The Appellant’s application was allowed, thereby permitting the mark, ‘NOKIA’, to be declared as a well-known mark in India.
The law is unambiguous and specific with respect to recognition of the mark by a court, and this was sufficiently proved by the Appellant. The primary observation is that the Respondent-Registrar ought to have taken due care and consideration to the evidence submitted by the Appellant which could have prevented an appeal to the IPAB.
[1] Nokia Corporation v. The Registrar of Trademarks, SR. NO. 61/2017/TM/MUM, decided on Aug. 25, 2020.
[2] CS(OS) 286/2012.
[3] 2011(46) P.T.C. 244 (Del.).
[4] CS(OS) 1694/2015
[5] Agar Distributors & Ors. v. IPAB, 2011 (4) ALLMR 403; The IPAB is empowered to take additional documents on record as per Order XLI Rule 27 of the Code of Civil Procedure, 1908.