India: Delhi High Court's In‐Depth Analysis Of Law Governing Trademark Renewal

Last Updated: 5 March 2018
Article by S.S. Rana & Co. Advocates

Hon'ble Justice Vibhu Bakhru of the Delhi High Court, in a recent decision in the case of M/S Epsilon Publishing House Pvt ... vs Union Of India, has rendered an in-depth analysis of provisions and rules pertaining to renewal of mark, removal of mark on non-renewal and restoration of trademark. The case highlights the statutory duties of Registry in cases of renewal of trademark.

Brief background ‐

  •  The petition challenges an order (hereinafter referred to as 'the impugned order') passed by the Registrar of Trademarks (hereinafter referred to as 'the Registrar').
  •  M/S Epsilon Publishing House Pvt. Ltd., (hereinafter referred to as 'the Petitioner') claims that it is engaged in the business of printing since 2000 has been using the trademark 'EASY NOTES' on all its printing material since 1999. The Petitioner has also secured registrations of its trademarks, 'EASY NOTES' (Registration No. 1590623) in class 16; 'E.A.S.Y.' (Registration No. 1409455) in class 16; and 'EPSILON' (Registration No. 1107286) all in class 16.
  •  The registration of 'LOKPRIYA EASY NOTES' in favor of Pardeep Kumar Jain (hereinafter referred to as 'Respondent No. 3') was applied for on May 02, 2001, which was given to Respondent no. 3 on March 07, 2007. Similarly, the registration of 'EASY NOTES' (Petitioner's trademark) was applied on August 14, 2007, which was registered in the Petitioner's favor on March 25, 2010.
  •  The registration of Respondent No. 3's mark ended on May 02, 2011. An application was filed for renewal of Respondent's trademark registration on May 19, 2011. Thereafter, on March 13, 2013, the Petitioner filed a petition before the Trademark Registry seeking cancellation of the registration of the Respondent No. 3's trademark. Subsequently, another request was filed by the Petitioner for obtaining certified documents relating to Respondent no. 3's trademark application. To which a reply sent through a letter dated September 17, 2013, to the Petitioner that Respondent No. 3's trademark did not appear to be renewed.
  •  Again on May 22, 2015, a suit for permanent injunction was filed by the Petitioner against the Respondent no. 3, seeking a permanent injunction restraining Respondent no. 3 to use its trademark. Again on April 12, 2017, the Petitioner filed objections with the Registrar of Trademark, inter alia, praying for removal of Respondent No 3's trademark from the Register.
  •  The Trademark Registry ignored the objections of the Petitioner and renewed the trademark 'LOKPRIYA EASY NOTES' in favor of Respondent no. 3.
  •  Thus, this petition was filed by the Petitioner

Issue Raised ‐

  •  Was the order passed by the Registrar of Trademarks on May 04, 2017, in contravention with Section 25 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act')?

Petitioners' Arguments ‐

  •  In light of Section 25 (3) of the Act, the Petitioner submitted that since the renewal application was not filed before the expiration of Respondent No 3's trademark (i.e. on or before May 02, 2011), the Registrar was required to remove the trademark from the Register.
  •  It was submitted that the application of renewal was made 17 days after the expiration of the trademark, and thus, should have been accompanied by the prescribed surcharge in addition to the prescribed fee. Since there was no surcharge accompanying the application, hence, it could not be scrutinized by the Trademark Registry.
  •  It was also submitted that the said Section does not give any discretionary power to the Registrar to disregard the delay. Also, in this case the exception given in Section 25 (3) of the Act is not applicable. Thus, Respondent No 3's trademark should be removed accordingly.
  •  The Petitioner also contended that he should be given an opportunity to be heard as the third party rights had been vested in favor of the Petitioner on account of non-renewal of the trademarks, in light of Rule 66 of the 2002 Rules.

Respondent's Arguments ‐

The Trademarks Registry (hereinafter referred to as 'Respondent no. 2') filed an affidavit as per the order passed by the Court on July 07, 2017. In the affidavit it was affirmed that:

"It is submitted that the process of renewal is initiated after getting requisite fee amount by cash section on specified form TM-R (Form-TM-12 under the old Trade Mark, Rules 2002) by cash section and then it is sent for scanning and uploading in concerned section. Thereafter, the renewal requests are notified in renewal section wherein section scrutinizes the application and if request of renewal is as per law, the marks are renewed by the renewal section. However, during the scrutiny of renewal requests, if any deficiency is found, a compliance letter is issued. It is further submitted that in normal course, the Registrar of Trade Marks sends compliance letter and such notice was issued in the present matter also."

COURT'S DECISION

  •  The Court took note of the fact that the renewal application was filed on May 19, 2011, accompanied by a consolidated cheque for a sum of 'INR 9,000/'- out of which 'INR 5,000/-' was for the renewal fee. However, the said form was not scanned or uploaded and, therefore, the said form was not scrutinized by the renewal section of the Trademark Registry and remained pending. This came to light on receipt of a letter dated March 20, 2017, sent by Respondent No. 3 seeking information as to the status of the renewal request.
  •  The Court pointed out that Respondent No. 2 has a practice of issuing a communication indicating deficiencies, if the applications filed are not found to be in order, which in this case was not done. Thus, it would be unfair to Respondent no. 3 if they are penalized for it. The Court pointed out that Respondent No. 3 had no opportunity to cure its application, as it was confirmed by Respondent No. 2 that the application of Respondent No. 3 was not scrutinized, and therefore was not processed further.
  •  Talking about Rule 11 (5) of the 2002 Rules, the Court said that it does not mean to completely ignore any application that is not filed in the prescribed format. In the present case, it is pointed out that there is a consistent practice to examine all applications for renewal and to point out deficiencies. This would obviously include the deficiency in payment of fee/surcharge as well, thus, enabling the concerned party to cure the same.
  •  Ponting out Rules 64 (1), 65 and 66 of the 2002 Rules, the Court stated that in the present case Respondent no. 2, has not taken any steps to remove the trademark from the Register and consequently no such removal has been advertised.
  •  Not accepting the contention of the Petitioner, the Court specifically made it clear that 'If the renewal fee is not paid by the date of expiry, the mark is not immediately removed from the Register. First, the fact of non-payment of the renewal fee is published. The proprietor has a period of six months from the date of expiry within which to file a request for renewal together with the renewal fee and an additional renewal fee. Pending the filing of such a request, the registration is in limbo. It has expired but has not been removed from the Register.'
  •  Refuting the contention of the Petitioner, the Court specified that 'the registered proprietor would be deprived of the grace period of six months in terms of proviso to Section 25 (3) of the Act'.

The Court was of the view that Respondent no. 3 cannot be penalized as the Trademark Registry did not adhere to the timelines as required. The defect is a curable one, if it was brought to notice and since the Registry failed to do so, Respondent no. 3 could not be deprived of the right to cure the defect within the time prescribed under the Trade Mark Rules. Further, the Court said that no interference by this Court is called for as the present case is not one of restoration of a trademark that has been removed from the Register. Therefore, in the light of above reasons the petition was dismissed by the Court.

For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in

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