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  • Writer's pictureDivanshi Gupta

High Court: For grant of well-known status, an Affidavit by way of Evidence is not mandatory


In the recent case of Kamdhenu Ltd v. the Registrar of Trade Marks, the Delhi High Court held that in order for a determination of well-known status of a trademark, an affidavit by way of evidence cannot be held to be a mandatory requirement for the grant of well-known status under the Trade Marks Act, 1999 (hereinafter the “Act”) and the Trade Mark Rules, 2017 (hereinafter the “Rules”).


The Appellant claimed ownership and proprietorship of the mark “KAMDHENU” in relation to various goods and services, stating that the mark had been adopted in 1994. It was further asserted that the Appellant had expanded its business over the years, venturing into milk, dairy products, mineral water, paint, real estate, etc., and other businesses. The Appellant claimed to have filed and registered several trademarks, including copyright registrations for the mark "KAMDHENU" in various classes. With substantial goodwill and diversification into multiple businesses, the Appellant intended to seek a well-known status. Accordingly, on August 17, 2017, the Appellant filed an Application before the Trademark Registry, seeking a declaration as a ‘well-known mark’ under Section 11(8) of the Act and Rule 124 of the Rules. Supporting documents, such as judicial orders recognizing the brand "KAMDHENU" as a well-known mark, were filed along with the Application. Additionally, newspaper advertisements, contracts, invoices, media-related documents, and a list of successful cases where the Appellant obtained injunctions in respect of the mark “KAMDHENU” were also submitted. However, the Registrar rejected the Application, citing the Appellant's failure to provide evidence of the mark's well-known status through an affidavit. In response to the impugned order, the Appellant initiated an appeal.

The Appellant submitted that the Registrar's approach had been entirely erroneous, as the primary reason for rejecting the Application was the alleged non-filing of evidence in the form of an affidavit. It was further argued that Rule 124 of the Rules did not mandate the Applicant to exclusively submit evidence through an affidavit. Additionally, it was submitted that, at most, the failure to submit an affidavit, while providing supporting documents with the Application, could be considered as a rectifiable defect. The Appellant should have been afforded an opportunity to file the required affidavit instead of facing outright rejection. It was submitted by the Appellant that Section 129 of the Act, which pertains to evidence before the Registrar, should be construed as a directory provision, as indicated in the Statement of Objects and Reasons accompanying the Trade Marks Bill, 1999.

On the other hand, the Respondent relied upon a public notice dated May 22, 2017 issued by the Office of the Controller General of Patents, Designs and Trademarks, which required filing of evidence for seeking declaration as a well-known mark. It was submitted that considering the nature of the required evidence, it was implicitly understood that such evidence should be filed by way of an affidavit. Therefore, the non-filing of an affidavit would have the effect of rendering the evidence ineligible for consideration by the Registrar.


The Court examined the nature of the evidence and documents that the Applicant was required to submit for the determination of a well-known trademark under Section 11 of the Act, in conjunction with Rule 124 of the Rules. The Court opined that the evidence filed must consist of substantial documentary proof, which would establish contemporaneous and continuous use, reputation and goodwill.

It was observed by the Court that the Rule 124 of the Rules embodies the term “evidence and documents”. The same could also include affidavits by way of evidence and other documents. However, the Court clarified that it cannot be mandated that an affidavit is obligatory, as long as there exists sufficient evidence to substantiate the case.

Upon perusal of the language employed in the Act and the Rules, it becomes evident that evidence, as envisaged under Section 129 of the Act, is ordinarily presented through an affidavit. Nevertheless, it is imperative to recognize that oral evidence can also be accorded due consideration. It is essential to refrain from construing Section 129 of the Act as confining the definition of evidence solely to "oral evidence" or "evidence by way of an affidavit," as delineated in Section 3 of the Evidence Act, 1872. Thus, it was observed by the Court that “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.”

After considering legal position in light of the Evidence Act and the Public Notice, it was held that an affidavit by way of evidence cannot be deemed a mandatory requirement for granting well-known status under the Act and the Rules. However, it was stated that the submission of documentary evidence remains necessary for such determination.

The Court held that “in the process of determination, as per the requirement of Rule 124(3) of the Rules, if the Registrar is of the opinion that any particular documents need to be supported by way of an affidavit, the Registrar can always give an opportunity to the applicant to file such an affidavit rather than rejecting an 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.”

The Court, in the present case, noted that the Appellant had not only submitted various documents in support of their claim for well-known status but also provided court orders recognising their trademark proprietorship or ownership. Given these circumstances, the Court held that the Trade Mark Registry should have afforded the Appellant an opportunity to file the necessary affidavit. Furthermore, the non-filing of the affidavit should not have resulted in the outright dismissal of the Application itself. Consequently, the Court granted the Appellant an opportunity to file a supporting affidavit, along with any additional documents in support of their Application for the grant of well-known status for their mark “KAMDHENU”.


The case is significant as it provides clarity on the legal provisions on well-known marks and the necessary documentation required to seek a declaration for a well-known mark. It emphasizes the importance of protecting the rights of the Applicant, stating that mere procedural disparities should not undermine the status sought. Instead, an opportunity should be afforded to the Applicant to present their case adequately.


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