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IP Case Digest · Trade Marks Act s.11(7)

Section 11(7), Trade Marks Act: case law

3 judgments of the Delhi High Court and the Bombay High Court applying Trade Marks Act s.11(7), from 2023–2026, each with a headnote by BRB Legal.

3judgments
2courts
2023–2026years

GlaxoSmithKline Pharmaceuticals Limited v. Walter Healthcare Private Limited & Anr., CS(COMM) 403/2025

Delhi High Court · Injunction granted

CALPOL declared a well-known trade mark for medicinal and pharmaceutical products under section 2(1)(zg), the Court finding the criteria in sections 11(6) and 11(7) satisfied. It relied on continuous use since 1991, sales exceeding Rs 300 crore in 2024 alone with more than 20 crore pack units sold, sustained marketing and advertising spend, extensive coverage in widely circulated publications, consistent visibility in pharmacies across the country and on third party e-commerce platforms, and a series of earlier injunctions and consent decrees obtained against infringers.

TikTok Limited v. The Registrar of Trade Marks, Mumbai & Anr., Commercial Miscellaneous Petition No. 10 of 2024

Bombay High Court · Dismissed

Petition dismissed. The refusal to include TikTok in the list of well-known marks under Rule 124 of the Trade Marks Rules 2017 was upheld. Section 11(6) permits the Registrar to take into account any fact he considers relevant, and the court held that the ban imposed on the application by the Government of India under the Information Technology Act, on grounds going to the sovereignty and integrity of India, defence and public order, is such a fact. That the ban on certain other applications had since been lifted did not assist the petitioner while this one remained in force. The court was careful to record that the mark remains registered in India and continues to enjoy the statutory protection available under the Act; what was refused was the added protection that inclusion in the list confers.

Kamdhenu Ltd. v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 66/2021

Delhi High Court · Allowed

Summary rejection of an application under Rule 124 for inclusion in the list of well-known marks, for want of an affidavit, set aside. Rule 124 speaks of evidence and documents, and evidence under the Evidence Act includes both oral and documentary evidence, so section 129 cannot be read to confine it to affidavits. An affidavit is therefore not mandatory where there is sufficient documentary evidence; conversely affidavits without supporting documents may not establish well-known status at all. Some matters, such as the reasons for adoption of a mark, the manner of its coining or a family history of use, may be capable of proof only by affidavit, and an applicant may file both. Where the Registrar considers particular documents need to be supported by affidavit, Rule 124(3) allows him to give the applicant an opportunity to file one rather than rejecting the application summarily, and non-filing is not fatal. The Court also set out the documentary evidence that establishes well-known status.

Other provisions of the Trade Marks Act

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