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JUDGMENT ON TRADEMARK RENEWAL


Posted By Sarthak on 06 March 2018

The recent Delhi High Court Judgment titled as M/s Epsilon Publishing House Pvt. Ltd. Vs. Union of India, decided by Hon’ble Justice Vibhu Bakhru, deals with Trademark renewal:

 

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 that were 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')?

 

The following was held:

• 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 penalised 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.

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