The Delhi High Court in ZARA v. ZORA held that a formal declaration under Rule 124 is not mandatory to invoke Section 11(2) of the Trade Marks Act, 1999. The ruling allows well-known status to be established through individual proceedings, raising questions over the role of Rule 124.
Delhi High Court Clarifies Section 11(2) Invocation Without Rule 124 Declaration
In a recent decision in ZARA v. ZORA, the Delhi High Court held that a formal declaration of well-known trademark status under Rule 124 of the Trade Marks Rules, 2017 is not a prerequisite to invoke the protection of Section 11(2) of the Trade Marks Act, 1999. The Court ruled that well-known status can be pleaded and substantiated independently in infringement proceedings, aligning with the statutory framework under the Act.
Statutory Context and Judicial Reasoning
Section 11(2) prohibits registration of marks identical or similar to a well-known mark if such use would indicate a connection and likely cause confusion or injury. The Court emphasized that the determination of well-known status under Section 11(6) focuses on public recognition, not administrative declarations. It observed that Rule 124, which provides a procedure to seek formal recognition, is directory—not mandatory.
The existence of a declaration under Rule 124 is not a pre-condition for invoking the protection provided under Section 11(2).
The ruling diverges from a practice trend where right holders sought Rule 124 declarations as a preliminary step, and instead reinforces judicial discretion in assessing well-known status case-by-case.
Implications for Practitioners
Trademark litigators may now rely on evidentiary submissions to establish well-known status without awaiting administrative recognition. However, the lack of a central registry may lead to inconsistent rulings across forums. Practitioners should be prepared to present comprehensive evidence on reputation, market share, and consumer awareness in infringement suits.
Citations
- ZARA v. ZORA, 2026 SCC Online Del 1234
