Case Summary: TATA SIA AIRLINES LIMITED v. UNION OF INDIA, 2023: DHC:3659

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Published On: Novemeber 19th 2025

Authored By: Moveeka K
Government Law College, Coimbatore
(Affiliated to TNDALU)

Court: HIGH COURT OF DELHI.

Citation: 2023: DHC:3659

Bench: JUSTICE JYOTI SINGH (SINGLE BENCH).

Date of Judgment: MAY 25, 2023

Relevant Provisions/Statutes: 

  1. Trade Marks Act, 1999: Section 11(6), Section 11(8)
  2. Trade Marks Rules, 2017: Rule 124, Form TM-M.

Brief Facts

Background of the Mark

  • Tata SIA Airlines, a joint venture of Tata Sons and Singapore Airlines, operates airline services in India under the brand name “VISTARA.” 
  • Eventually, the airline claimed considerable reputation, goodwill, and distinctiveness in the “VISTARA” brand. 

2019 Declaration by the Delhi High Court

In Tata SIA Airlines Ltd. v. Pilot 18 Aviation Book Store & Anr., 2019 SCC OnLine Del 9535, the Delhi High Court declared “VISTARA” a “well-known trademark” under Section 2(1)(zg) of the Trade Marks Act, 1999, after applying the various factors that demonstrated the widespread reputation and notoriety of the mark. 

Application before the Registrar

Following the Court’s declaration, Tata SIA applied to the Registrar of Trade Marks for a finding that the mark “VISTARA” should be included in the official list of well-known trademarks of the Trade Mark Registry. 

Registrar’s Rejection

The Registrar refused the application, arguing that in light of the Trade Mark (Amendment) Rules, 2017, it was a mandatory perusal of Rule 124. 

Registrar specifically stated that Tata SIA must:

  1. The application must be made using Form TM-M.
  2. Paying the statutory fee (₹1,00,000); and
  3. Submitting the necessary documents to substantiate the application, as outlined in Rule 124, to be considered on the official list.

Writ Petition

Tata SIA Airlines, dissatisfied with this rejection, filed a writ petition under Article 226 of the Constitution before the Delhi High Court. They sought a writ of mandamus directing the Registrar to enter ‘VISTARA’ in the list of well-known trademarks without the need of complying with Rule 124, given that the mark was already declared as well-known, judicially, in the 2019 Delhi High Court judgment.

Issues

  1. Whether the Trade Marks Registry must automatically include a trademark in the official list once a court declares it “Well-Known.”
  2. Whether procedural requirements (Form TM-M and fee under Rule 124) should still apply in cases of court-declared Well-Known Marks.

Arguments

Petitioner’s Arguments (Tata Sia Airlines Limited)

The petitioner contended that the court’s determination declaring the trademark “VISTARA” as well-known should be final and sufficient for its inclusion in the official list of well-known trademarks maintained by the Registrar of Trade Marks. According to the petitioner:

  • The judicial decree is a binding legal pronouncement that conclusively establishes the well-known status of the mark.
  • Requiring the trademark proprietor to go through an additional administrative step of filing a fresh application (Form TM-M) and payment of fee under Rule 124 of the Trade Marks Rules, 2017, negates the effect of the court’s judgment.
  • This duplication forces brand owners to repeat the process they have already successfully litigated, imposing unnecessary procedural burdens and costs.
  • The petitioner argued that such an administrative hurdle is contrary to the spirit of the judicial determination and undermines the efficiency of the trademark protection framework.
  • Since the court has positively adjudicated on the status of the mark as well-known, the Registrar should be compelled to include the trademark automatically without further delay or formality. 

Respondent’s Arguments (Union of India/Registrar of Trade Marks)

The respondent, representing the official trademark registry, took the opposite position stressing procedural uniformity and administrative rigor:

  • Rule 124 and the procedural form TM-M apply to all requests for inclusion in the list of well-known trademarks, regardless of whether the well-known status was determined by a court or the Registrar.
  • These requirements are not arbitrary but serve a critical administrative function:
    1. They ensure the proper recording and documentation of trademarks in the statutory registry.
    2. They provide for transparency and public notice, ensuring that all stakeholders are aware of the marks designated as well-known.
    3. The process includes prescribed fees which are important for the maintenance of the registry’s resources.
  • The respondent argued that treating court-declared well-known marks differently would lead to inconsistencies and procedural chaos.
  • The established rules guarantee that all trademark owners—whether their marks are recognized as well-known by courts or administrative authorities—are treated fairly and equally.
  • The administrative system needs these formal steps even after a court’s decision so that the Registrar’s official list remains authoritative, organized, and up-to-date.
  • Thus, the petitioner cannot bypass the statutory procedure laid down in Rule 124, which is designed to complement, not conflict with, judicial decisions.

Judgment

The Delhi High Court clarified the scope of Rule 124 of the Trade Marks Rules, holding that it applies to all entries without exception. The Court emphasized that once a competent court declares a trademark to be “well-known” under the Trade Marks Act, the Registrar of Trade Marks cannot sit in appeal over that declaration or re-examine the issue of well-known status. The Registrar’s role thereafter is administrative in nature, falling within the realm of governmental duty rather than adjudicatory discretion. However, even in such situations, the Registrar must comply with statutory procedures: an application in Form TM-M must be filed along with the requisite fee to initiate the process of recording the mark’s well-known status. Thus, while the Registrar cannot revisit or question a court’s declaration, he remains bound to ensure procedural compliance before formally entering the trademark in the official list of well-known marks, as directed by Rule 124.

Ratio Decidendi

The Delhi High Court’s ruling is that  “Rule 124 of the Trade Marks Rules, 2017” applies uniformly to all cases of inclusion of marks in the list of well-known trademarks—whether such inclusion follows from a determination by the Registrar or from a declaration by a competent court. The Court clarified that while the substantive adjudicatory function of deciding whether a mark is “well-known” lies either with the Registrar in prescribed proceedings or with the Court through its orders, the procedural mechanism under Rule 124 cannot be bypassed.

Once a Court has declared a mark to be well-known, the Registrar acts only in a ministerial or administrative capacity, with no authority to re-examine or reassess the well-known status. However, the trademark proprietor is not automatically exempt from procedural compliance; they must submit Form TM-M along with the statutory fee, enabling the Registrar to formally record and publish the mark in the official list of well-known trademarks, thereby ensuring procedural uniformity and transparency.

Obiter Dicta 

The Delhi High Court observed that the present legal position, which obliges trademark proprietors to file Form TM-M and pay the requisite fee even after their mark has already been declared well-known by a court, may impose an avoidable financial burden. The Court noted that such a requirement could be seen as redundant since the judicial declaration is conclusive and not open to reconsideration by the Registrar. In highlighting this concern, the Court suggested that the legislature may consider reviewing and amending the fee regime to provide relief in cases where the well-known status has already been judicially recognised. 

This would serve the interests of equity by reducing unnecessary costs for trademark owners while maintaining the integrity of the Registrar’s procedural functions. However, until any legislative reform occurs, the mandatory requirements under Rule 124 and the prescribed fee structure remain in force.

Final Decision

The Delhi High Court ultimately dismissed the writ petition filed by Tata Sia Airlines. The Court held that even though the mark “VISTARA” had already been judicially declared as a well-known trademark, compliance with “Rule 124 of the Trade Marks Rules, 2017” could not be bypassed. Consequently, Tata Sia Airlines was directed to submit Form TM-M along with the prescribed fee for the mark “VISTARA” to be formally entered and recorded in the official List of Well-known Trademarks maintained by the Trade Marks Registry. This affirmed that the Registrar’s role, though ministerial after a court declaration, still requires the trademark proprietor to activate the process procedurally and bear the statutory costs as mandated by law.

References

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