The Delhi High Court held that a formal declaration under Rule 124 is not mandatory to invoke Section 11(2) of the Trade Marks Act, 1999 for claiming well-known status. The ruling allows courts to independently assess well-known marks based on evidence, even without prior recognition by the Registry.
Delhi High Court Dispenses with Mandatory Declaration for Well-Known Mark Status
In a significant development for trademark jurisprudence, the Delhi High Court in ZARA v. ZORA held that a formal declaration under Rule 124 of the Trade Marks Rules, 2017 is not a precondition to invoke the protection of Section 11(2) of the Trade Marks Act, 1999. The Court emphasized that well-known status can be established through evidence and precedents from past proceedings, even if the mark has not been formally declared as such by the Registrar.
The decision arises from a passing-off action where the plaintiff, a global fashion retailer, sought relief against a similar-sounding mark. The Court examined the statutory framework under Sections 11(2) and 11(6), read with Rule 124, which allows the Registrar to maintain a list of well-known marks. However, the Court clarified that this rule does not fetter judicial discretion. Rather, courts retain the authority to determine well-known status independently under Section 11(2) based on factors laid out in Rule 123.
"The absence of a declaration under Rule 124 cannot be a bar to a party urging well-known status of its mark in an infringement proceeding,"
The ruling resolves ambiguity caused by divergent practices across jurisdictions. It reinforces judicial autonomy in assessing market realities and consumer perception. For practitioners, this means that in infringement or passing-off suits, relying on prior judicial recognition of a mark’s reputation may suffice, even without formal Rule 124 declarations. However, it may also lead to increased evidentiary burdens in establishing well-known status from first principles.
Citations
- ZARA v. ZORA, Delhi High Court, 2026
