Nokia Corporation vs Registrar Of Trademarks

Manmohan Singh, J

The appellant has filed the present appeal under Section 91 of the Trademarks Act, 1999 arising out of the Order dated 27th March, 2017 passed by

Registrar of Trade Marks, Trade Marks Registry, Mumbai, thereby not allowing the Request for incorporating the mark NOKIA in the list of ""Well

Known Marks"" in exercise of powers as mentioned under Section 11(6) of The Trade Marks Act, 1999)

The Representation was filed by the Appellant on 5th June, 2014 before the Learned Controller of Patents, Designs and Trademarks for inclusion

of Nokia in the list of Well-known marks as maintained by the Trademarks Registry. The said representation was disallowed by virtue of the

impugned order by the Registrar of Trade Marks, at Trade Marks Registry, Mumbai. The Registrar and/or the Committee constituted (as mentioned in

the impugned order) while adjudicating the representation for determining the trade mark NOKIA as a well-known mark has erroneously not relied

upon the court order which sufficiently states and recognizes the trade mark NOKIA as a well-known trade mark. The Registrar has issued the order

rejecting the application stating that in order to consider a trade mark to be a well-known, there must be a court order which determines the mark to

be a well-known trade mark. The impugned order reflects blatant rejection of a prevailing court order which recognizes the trade mark NOKIA as a

well-known trade mark. Additionally, the Registrar issued the impugned order without providing any opportunity of being heard to the Appellant to

present their case and has thus failed to exercise its discretionary powers judiciously and against the principles of natural justice.

No counter affidavit has been filed by the respondent who failed to appear before us. Urgent request is made to hear the appeal. The same request

was allowed.

Brief history and global launch of the Nokia brand as per the of the appellant the submissions are as under:-

a) The trademark NOKIA was coined and adopted by the predecessors of the Appellant way back in the year 1865. Due to the nature of the mark

NOKIA which is an arbitrary mark and has no reference to any attribute of any product/service whatsoever. The inherently distinctive trade mark

NOKIA has been adopted both as a trade name as well as a trade mark and service mark by the Appellant. Since its adoption, the Appellant's

expanded the use of the trade mark NOKIA on and in connection with a wide variety of products ranging from paper, rubber boots, tyres, power

generation, cable and electronics business to its now famous connectivity and mobile devices related business. The year 1963, marked the Appellant's

first foray into connectivity/telecommunications business when it started developing radio telephones for the army and emergency services.

b) The Appellant has also been an innovator and pioneer in the telecommunication industry. In the year 1982, the Appellant was the first to introduce

the car phone-the Mobira Senator. The world's first GSM mobile call was made in 1991, using NOKIA equipment. The Appellant was a key player in

developing the GSM technology widely in use all across the world and was instrumental in the ""Mobile Phone Revolution"" which has benefitted the

whole world in an unprecedented manner in last two and a half decades. The Appellant commercially launched its first handheld GSM phone, the

NOKIA 1011 in 1992. The world's first satellite call was also made using a NOKIA GSM handset in 1994. True copies of the documents that show

the history of the mark Nokia are being filed in these proceedings.

c) Since the adoption of the trademark NOKIA, the Appellant has spent tremendous time, effort and money in promoting, publicizing and popularizing

the same in respect of a diverse range of goods & services. Any reference to the trademark NOKIA in respect of any goods is indicative of the

Appellant's source of manufacture or some connection with the Appellant. In consequence of the prior, long, continuous and extensive use of the

trademark NOKIA on the part of the Appellant, the said trademark has acquired worldwide tremendous, enviable and unreachable reputation and

goodwill amongst the purchasing public and the members of the trade and by virtue of the same, the mark NOKIA is today exclusively associated

with the Appellant. True copies of the documents that show the advertisement and promotions carried on by the Appellant are being filed in these

proceedings.

d) Today, the Appellant is not only one amongst the leaders in the field of telecommunication but also in other cutting-edge technologies like, inter alia,

wireless connectivity, audio, imaging, sensing, employing over one hundred thousand (100000) of people around the world and being present in over

140 countries. The pioneering ability of the Appellant can be gauged from the fact that way back in 2005 the Appellant had already sold its billionth

mobile phone. As a result, the Appellant acts as a driving force within its industry. The Appellant, directly or via its authorized licensees, provides user-

friendly and innovative technology and mobile devices, and related products that incorporate graphics, games, media and business applications to

enrich people's communication experience and in addition to supplying equipment, solutions and services to network operators and consumers at large.

In addition to its Digital Media business (www.ozo.nokia.com), Nokia has also entered the Digital Health business with the acquisition of Withings

(www.withings.com) in May 2016.

e) The success of the Appellant is evident from the fact that the Appellant today employs over one hundred thousand (100000) of people all over the

world, including India and has active offices and operations in most of the countries worldwide, including India. The Appellant's annual turnover runs

into billions of Euros today. The Appellant has earned enviable reputation and goodwill in its well-known mark NOKIA.

f) The Appellant has acquired statutory rights (in addition to the common law rights) for exclusive use of the trademark NOKIA by virtue of

registration(s) of its well-known trademark NOKIA in diverse classes in almost all the major jurisdictions of the world. The Appellant is the registered

proprietor of a number of trademarks in India. A list of all of the registrations of the Appellant in numerous countries worldwide is being filed in the

present proceedings.

GROWTH OF THE NOKIA BRAND

We have gone through the entire records and it reveals as under:-

a) Documentary evidence highlighting the growth of the NOKIA globally is being filed in these proceedings. By way of example, the NOKIA brand is

now famously attached to, and well-known for, its connectivity devices and services, mobile devices, audio/video innovations, merchandising and

memorabilia and much more.

b) Nokia's Trade Mark Portfolio Nokia is an internationally reputed, well-established and well-known manufacturer and marketer of, inter alia,

connectivity/telecommunication and audio/video equipment sold under the famous trade mark NOKIA. The mark NOKIA is protected in about 200

jurisdictions worldwide. A list of Appellant's trade mark registrations in numerous countries of the world for NOKIA is being filed in these

proceedings. The trade mark NOKIA is inherently distinctive in relation to the Appellant's goods and services globally. Such distinctiveness has been

heightened by the exclusive, extensive and continuous use of the mark NOKIA globally and in India across a vast range of goods and services.

c) That in order to protect its rights in and to the trade mark NOKIA in India, the Appellant has acquired the following trade mark registrations in

India as per the following details:

d) The aforementioned registrations have been renewed from time to time and are valid and subsisting. The Appellant also craves leave to rely upon

the registrations granted by the Registrar of Trademarks in its favor as may be pending at the time of filing of the present appeal. The aforementioned

registrations vest in the Appellant the exclusive right to use the same upon or in relation to the goods manufactured or services rendered or with their

consent. True copies of the registration and/or renewal certificates for the aforementioned registrations are being filed in these proceedings. The

Appellant, by nature of its business, has diverse interests and over a substantially long period of time, used the mark NOKIA for diverse goods and

services.

e) Nokia's Domain Name Registrations That the Appellant is the owner of the NOKIA domain names, under both the generic top-level domain (TLD)

.com"" (in the English language and vernacular) and under the respective country code top-level domains in over 60 countries all over the world. The

Appellant is also the owner of the new gTLD "".NOKIA"". The Appellant first registered the domain name www.nokia.com in July 1991 and has

consistently renewed the registration of this domain name since then. Every week, approximately 19 to 20 million people visit or ""hit"" Appellant's

www.nokia.com web site. On www.nokia.com, the Appellant provides information about a wide variety of goods and services including but not limited

to the NOKIA-branded cameras, mobile phones, tablets and related accessories, as well as information for their services. In order to customize the

user experience, the Appellant has dedicated websites to every country. For example, the Appellant is the owner of www.nokia.in which due to the

TLD. IN shows the Appellant's interest to maintain an India specific website and which gives the Indian consumers information and assistance about

NOKIA-branded goods and services of the Appellant. True copies of WHOIS records showing the ownership of the domain names as well as

extracts from the abovementioned websites are being filed in these proceedings.

f) Nokia's Common Law Rights That in addition to the statutory rights mentioned above, the Appellant has also acquired common law rights in and to

the mark NOKIA. Such common law rights have accrued to the benefit of the Appellant owing to the extensive, exclusive, continuous and long-

running use of the mark NOKIA in India and around the world.

g) The popularity, success and well known status of the NOKIA brand is amply evidenced by the fact that in 2010, the Appellant was still the 8th Best

Global Brand; up to 2012, the Appellant was in the top 20 Best Global Brands, and since 2014 the Appellant has, inter alia, launched the Nokia N1

tablet and the multi-awarded Nokia OZO virtual reality camera, acquired the Americano-French company ALCATEL-LUCENT and the successful

wearables company WITHINGS and has entering into a worldwide Brand Licensing deal with HMD Global Oy for Nokia-branded phones and

tablets. As further evidence thereof, the latest Nokia smartphones (Nokia 6) was sold out within minutes in China when it launched earlier this year.

This was reported widely and even in India. True copies of documents evidencing the above are being filed in these proceedings.

h) The Appellant's mark NOKIA till recent times has continuously featured among top 10 valuable global brands in Interbrand/Business Week's Best

Global Brands list from the year 2000 onwards. Interbrand is a full-service branding consultancy and Best Global Brands is one of the top published

business ranking in the world. True copies of annual ranking of the Applicant amongst best global brands since the year 2000 are also being filed in the

present proceedings.

i) In addition it is humbly submitted that the Hon'ble Delhi High Court has held that NOKIA is a well-known trademark. The said observation was

made by Hon'ble Justice Kailash Gambhir in a Dasti order and/or Contempt order in the matter of Nokia Corporation and Ors. V. Movie Express and

Ors. (under suit number CS(OS) 286/2012). The Hon'ble High Court has passed an interim ex-parte injunction against the said defendants. A true

copy of the said order is being filed in the present proceedings.

j) The Appellant also has a record of successful enforcement of its rights in and to the mark NOKIA in a number of jurisdictions worldwide. In this

regard, the Appellant would like to draw the attention of the Hon'ble Court to the list of decisions in various jurisdictions around the world, wherein

NOKIA has been held ""well-known"".

Taiwan:

Intellectual Property Office Decision of the Trademark Opposition No. G00911984 of March 28, 2003. NOKI & device No. 01025742;

Decision of the TIPO June 21, 2007. ROCKIA No. 01198046;

Decision of the TIPO July 6, 2007. ROCKIA No. 01211263.

Greece:

Trademarks Administrative Commission Decision No. 6324/2004 of August 8, 2001. NOKIA No. 137774.

Romania:

Commission for Re-examination of Trademarks Decision No. 228 of September 10, 2002. NOKIO No. 39962.

Decision of the State Office for Inventions and Trademarks October 31, 2006. NOKI No. 850634.

Indonesia:

Supreme Court of Republic of Indonesia Court of Cassation Decision No. 044/N/HAKI/2003 of March 24, 2004. NOK IIA No. 493286.

Benelux:

Judgment of the Appeal Court of Hague June 15, 2006. NOKTA TELECOM No. 723324.

Judgment of the District Court of Hague KG 05/508 of June 8, 2005. NOKTA No. 723324.

Hong Kong:

Judgment of the Department of Intellectual Property December 10, 2004.

AKIA No. N/14116.

Turkey:

Turkish Patent Institute Decision B.14.1.T.P.E.0.06.01/422 July 7, 2005.

Czech Republic:

Decision of the Chairman of the Patent Office August 30, 2006. NOKA No. 343997;

Decision of the Industrial Property Office November 20, 2006. NOKI No. 850634;

Decision of the Industrial Property Office November 12, 2007. NOKI No. 439002.

Lithunia:

Solution of the Republic of Lithuania State Patent Bureau Section of Appeals 11, 2006. NOKI No. 850 634.

China:

Decision of the Trademark Office April 9, 2008. NOKIA & NOKIA (CNchr) No. 4019515.

Finland:

Decision of the National Board of Patents and Registration June 12, 2008.

List of TMs with Reputation No. 2007014.

Bulgaria:

Decision No. 35-OM of the Patent Office of the Republic of Bulgaria of 15 September 2008.

Some of the WIPO Decisions wherein NOKIA has been held a ""well known"" mark:

Nokia Corp. v. Mr. David Wills, Case No. DWS2001-0004 (WIPO Feb. 25, 2002);

Nokia Corp. v. Uday Lakhani, Case No. D2000-0833 (WIPO October 19, 2000);

Nokia Corp. v. Private, Case No. D2000-1271 (WIPO Nov. 3, 2000);

Nokia Corp. v. United Digital, Case No. D2001-1176 (Dec. 19, 2001);

Nokia Corp. v. Nokia Ringtones and Logo Hotlines, Case No. D2001-1101 (Oct. 18, 2001);

Nokia Corp. v. Nick Holmes, Case No. D2002-0001 (WIPO Mar. 6, 2002);

Nokia Corporation v. Marlon Sorken, Case No. D2002-0276 (WIPO May 8, 2002);

Nokia Corp. v. Wavesmultimedia, Case No. D2002-0130 (June 24, 2002); Nokia v. Nokina Decision No. (2002) TM OPP 00917 (China, September

02, 2002)

Nokia Corp. v. Horoshiy, Inc. and LaPorte Holdings, Case No. D2004-0851 (WIPO Dec. 31, 2004);

Nokia Corp. v. Durmus Dalda, Case No. D2006-0931 (WIPO Sept. 11, 2006);

Nokia Corp. v. Oeistaemoe, Case No. D2007-1738 (WIPO Jan. 21, 2008);

Nokia Corp. v. Beadle, Case No. D2008-0218 (WIPO April 9, 2008);

Nokia Corp. v. Juha Vainio, Case No. D2008-0772 (WIPO July 8, 2008);

Nokia vs. ANOKING (Philippines, October 16, 2012)

NOKIA vs. NOKYALIGHTING (South Korea, 24.12.2014, Cl. 35); and

NOKIA vs. AIKON PHONE (Spain, Cl. 9; 11.03.2015)

NOKIA vs. NOVIA PARK (Turkey; 17.03.2016)

NOKIA vs. NOVIA PAZAR (Turkey; 29.02.2016)

NOKIA vs. NOJIA (China; 26.01.2016)

NOKIA vs. NOKE (China; August 2016)

NOKIA vs. NOKAE (Madrid, April, 2017).

True copies of the decisions that held the mark NOKIA as well-known are also submitted in the present proceedings.

BRIEF FACTS REGARDING THE SUBJECT REPRESENTATION AND THE PRESENT APPEAL.

Admittedly the Appellant had filed a request by way of representation on 05.06.2014 (hereinafter referred to as the ""Request"") before the

Controller General of Patent, Designs and Trade Marks, at Mumbai for incorporation of the mark NOKIA in the list of ""Well-known Marks"" in

exercise of powers as mentioned under Section 11(6) of the Trademarks Act, 1999.

The said request was filed by the appellant had filed the said request by virtue of the provision of Section 11(8) of the Trademarks Act, 1999. The

Appellant had relied on ex-parte interim order as passed by the Hon'ble Delhi High Court in the matter of NOKIA CORPORATION and Ors. V.

Movie Express and Ors. (under suit number CS(OS) 286/2012).

By virtue of provision of Section 11(8) of the Trademarks Act, 1999 'if a trademark is determined to be well-known in at least one relevant section

of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under the Act'.

Additionally, it is humbly submitted that Section 11 of the Trademarks Act, 1999 states that while determining a mark as a well-known trade mark, the

Registrar may rely on any of the facts/conditions mentioned therein in Section 11(6) of the Trademarks Act, 1999. Section 11(6) (v) of the Trade

Marks Act, 1999 specifically states that, 'the record of successful enforcement of the rights in that trademark in particular, the extent to which the

trademark has been recognized as a well-known trademark by any court or Registrar under that record'. Hence it is humbly submitted that Section

11(8) read with Section 11(6) (v) of the Trademarks Act, 1999 clearly lays down a mandatory condition to record a trade mark as a well-known trade

mark, provided the mark has been held to be a well-known trade mark by a Court.

The Appellant had also filed a follow up letter under cover of letter dated 31.08.2015 along with requisite documents requesting for adjudication of

the aforementioned request to enlist the trademark NOKIA in the list of well-known marks in India.

By virtue of an order dated 27.03.2017 the Ld. Registrar of Trademark had disallowed the said request for inclusion of the mark ""NOKIA"" in the list

of well-known marks in India. The impugned order as issued by the Trademarks Registry, Mumbai is also filed in the present proceedings.

That the Impugned Order is liable to be set aside as the same is in violation of the principles of natural justice. Given the fact that all the necessary

documents in order to support the Appellant stands for inclusion of ""NOKIA"" in the list of well-known marks and the same were submitted by the

Appellant along with the Representation. However, none of the said documents were taken into consideration prior to issuance of the impugned order.

The Impugned Order has been passed in a most casual manner without looking into the true facts and background of the matter by the Respondent.

No opportunity has been provided to the Appellant to be heard while adjudicating the representation and no consideration has been given to the

supporting documents filed by the Appellant.

The Impugned Order has been passed without application of mind. It is a settled proposition of law that where a trademark has been determined to

be well-known in at least one relevant section of the public in India by any Court or Registrar, the Registrar shall consider that trademark as a well-

known trademark for registration under the Act.

It is evident from the documentary evidence and supporting documents submitted along with the Representation that the said mark ""NOKIA"" is

entitled to be included in the list of well-known marks in India by virtue of Section 11(8) of the Trademarks Act.

The Respondent neither served a notice upon the Appellant nor provided any opportunity to the Appellant and disallowed the representation for

inclusion of the mark ""NOKIA"" in the list of well-known marks in India. The Appellant have not been provided with an opportunity of being heard

prior to passing of the Impugned order. Hence the said Order is based on conjectures, surmises and presumptions which are absolutely contrary to the

record. Therefore, it cannot be considered that the Respondent has acted in a just and fair manner prior to passing the Impugned order.

It appears to us that the Impugned Order has passed without following principal of natural justice, and in contravention of the mandatory provisions

of the law.

It was the duty of the respondent to peruse the supporting documents filed by the Appellant along with the representation by which it is clearly

evident that the Appellant's mark NOKIA is entitled to be included in the list of well-known marks as maintained by the Indian Trademarks Registry.

The Respondent should have provided an opportunity to the appellant to satisfy the respondent.

'Tata Sons Ltd. Vs. Manoj Dodia and Others- 2011 ((46) PTC 244 (Del))'

The Court held that well known trademark is a mark which is widely known or recognized by the relevant general public. The Court referred to

Article 6bis of Paris Convention, 1967 and also Article 16 of TRIPS Agreement 1994. The Court observed that as per Article 16 of TRIPS

Agreement 1994, in determining whether the trademark is well known, the members shall take account of the knowledge of the trademark in relevant

sectors of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. India

became a signatory of the TRIPS Agreement in the year 1994.

The paragraphs 5, 7, 8, 9, 12 and 13 of the following judgment will help the case of the appellant:-

'Texmo Industries v. Taxmo Aqua Engineering India Private Limited and Others-C.S. No. 50 of 2017 by Madras High Court'

The Hon'ble Delhi High Court, vide the judgment dated 21.08.2017 in the Suit No. CS (OS) 1694/2015 titled as Nokia Corporation vs. Manas

Chandra & Anr., again held the trademark ""NOKIA"" to be a well-known mark as per Section 29(4) of the Trade Marks Act, 1999. Accordingly, the

Appellant filed a miscellaneous petition dated 29th August 2017 (1st MP) for bringing the said judgment on record.

It has been held by the Hon'ble High Court of Bombay in the case of Agar Distributors and Ors. Vs. Intellectual Property Appellate Board and

Ors. (29.04.2011) (2011(4) ALL.M.R. 403), that this Appellate Board is empowered to take additional documents on record as contemplated under

Order 41 Rule 27 of the Code of Civil Procedure, 1908. Therefore, the judgments dated 21.08.2017 and 03.11.2017 of the Delhi High Court in the

above-mentioned cases may be considered and taken on record by this Hon'ble Board while adjudicating the present appeal.

The Delhi High Court in Suit No. CS (OS) 1694/2015 titled as Nokia Corporation vs. Manas Chandra & Anr., vide the judgment dated 21.08.2017

in para 10 held as follows- ""the Plaintiff's mark NOKIA is recognized as a well known trade mark and as per the provisions of Section 29(4) of the

Trade Marks Act, 1999 and the trade mark NOKIA is entitled to protection across all goods.

That the Delhi High Court in the Suit No. CS(OS) 286/2012 titled as Nokia Corporation and Ors. Vs. Movie Express and Ors., vide the judgment

dated 03.11.2017 in para 24 held as follows- "" the Plaintiff's mark is thus a well known registered trade mark and has repute in India. The use of the

mark by the Defendants is without any due cause and is detrimental to the distinctive character of the Plaintiff's highly distinctive, well-known and

registered mark. In such circumstances too the Plaintiff is entitled to seek the benefit of the statutory provisions of Section 29(4) read with Section

29(7), (8) and (9) of the Trade Marks Act. None should be continued to be allowed to use a world famed name to goods which have no connection

with the type of goods which have generated the worldwide reputation.

The Court considered the various parameters provided under Sections (6) and (7) of the Trademarks Act, 1999 that are to be taken into consideration

by the Registrar of Trade Marks in declaring a trademark as a well-known mark The Court observed that the parameters revolve around the

recognition of the trademark in the relevant section of the public, in short the reach and exposure that the mark has among the relevant section of the

public.

Thus, in view of above, the impugned order is in contradiction to the settled judicial principles and against the purpose of Trademarks Act which is

to accord protection to the honest and bonafide proprietors of a mark such as the Appellant in this case.

The impugned order dated 27th March, 2017 passed by Respondent no. 1 is, therefore, set-aside as the impugned order is passed without

application of mind and against the law.

The appellant's representation/application is allowed. It is declared that NOKIA is well-known trade mark in India also.

The appeal is allowed. The respondent is directed to publish that NOKIA is a well known trademark.