November 30, 2017
Section 25 of the Trademark Act, 1999 provides for the duration, renewal and removal and restoration of registration. Once a trademark is registered, the same has to be renewed by the registered proprietor of the trademark every 10 years from the date of filing the trademark.
Relevant extract of the Section 25 of the Act is reproduced herein below:
the registration of a trademark, after the commencement of this Act shall be for a period of ten years but may be renewed from time to time….
Notice before removal of trademark from Register– Section 25(3) of the Act in this context enumerates that at a date not less than one month and not more than 2 months before the expiration of last registration of a trademark, ifno application on Form TM-12 for renewal of registration together with prescribed fee has been received, then the Registrar shall notify the registered proprietor in writing in Form O3 of the approaching expiration.
Restoration of Trademark- An application for restoration of the trademark to the Register and renewal of its registration shall be made in the prescribed form within one year from the epiration of the last registrations of the trademark accompanied with the prescribed fee1.
The law and legalities with reference to renewal and restoration of trademark was recently analyzed by the Delhi High Court in the case of M/S Epsilon Publishing House Pvt. vs Union Of India2. The Court 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 Delhi High Court in the case also highlighted the statutory duties of Registry in cases of renewal of trademark.
In the case, the Petitioner had challenged before the Delhi High Court, order passed by the Registrar of Trademarks (Registrar), whereby the Registrar renewed the Respondent’s trademark ‘LOKPRIYA EASYNOTES’. The Petitioner in the case claimed that the impugned renewal was beyond the scope of Trademark Act and Trademark Rules.
The Petitioner who is in the business of printing educational books and guides contended that the trademark ‘LOKPRIYA EASYNOTES’ expired on 02.05.2011 and as the Respondent did not file renewal application for the impugned mark on time alongwith the prescribed fee , the said trademark was liable to be removed from the register of trademarks.
The Respondent in the case had filed an application for renewal of the trademark ‘LOKPRIYA EASY NOTES’ on 19.05.2011. The Petitioner sought cancellation of the Respondent’s application for renewal of the mark in question. However, the Trademark Registry renewed the respondent’s trademark LOKPRIYA EASY NOTES for a further period of 10 years. Aggrieved by the same, the petitioner has filed the present petition.
Here it would be relevant to mention that the Petitioner in the case is registered proprietor of the mark EASY NOTES in class 16 and claims to be prior adopter of the mark EASY NOTES.
Petitioner’s case– The Petitioner’s main contention was that in terms of Section 25 (2) of the Act , which states that the Registrar could renew registration of the trademark for a period of 10 years from the date of expiration of the original registration or the last renewal of registration, only on an application made by the registered proprietor of a trademark in the prescribed manner, and within the prescribed period, and subject to payment of the prescribed fee.
The Petitioner further submitted that in the instant case, the Respondent had not filed an application for renewal of the registration before its expiration i.e. on or before 2.05.2011. Thus, the Registrar of Trademarks should have removed the Respondent’s trademark from the Register as the stipulation of payment of prescribed fee under the proviso to Section 25(3) of the Act was also not fulfilled by the Respondent.
Respondent’s case:- The Respondent in the case rebutted the Plaintiff’s contention by stating that on filing of renewal application, the same is scrutinized by the renewal section of the Registrar of Trademarks and if the application is not as per law or if any deficiency is found then a compliance letter is issued by the Registrar.
The Respondent further contended that it is apparent that the Registry have a practice of issuing a communication indicating deficiencies if the applications filed are not found to be in order. However, in the case , no notice of any deficiency was issued to the Respondent by the Registrar and hence the Respondent could not be prejudiced for the same.
The Delhi High Court in the case dismissed the Petition and ruled that the Respondent’s trademark LOKPRIYA EASYNOTES was not liable to be removed from the Register of Trademark. While pronouncing an order in favour of the Repspondent, the Court made some essential observations which aid in contouring the law apropos renewal, removal and restoration of trademark in India. The Court’s observations in the case are stated as under:
- Registrar’s duty to inform registered proprietor of the mark about approaching expiration of the mark- The Delhi High Court in the case stressed on the Registrar’s responsibilty to point out defects in a renewal application, so that the registered proprietor gets the opportunity to cure them. The Court stated 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.
- That in terms of Rule 64(1) of the 2002 Rules, the Registrar is required to inform the registered proprietor of a trademark regarding the approaching expiration of the trademark at least one month and, not more than three months prior to the date of expiration of the trademark. Although, in terms of Rule 65 of the 2002 Rules, if the renewal fees is not paid at the expiration of the last registration of the trademark, the Registrar is required to remove the trademark from the Register and advertise the same in the journal. However, the proviso to Rule 65 requires the Registrar not to remove the trademark from the Register, if an application for payment of surcharge is made under proviso to Section 25(3) of the Act within six months from the expiry of the last registration of the trademark.
- Trademark restoration under Rule 66 of Trademark Rules, 2002- In terms of Rule 66 of Trademark Rules, 2002, if an application for renewal has not been received within a period of six months from the expiry of the registration, the trademark is to be removed and its removal advertised. Thus, the proprietor of the registered trademark has yet another chance to seek its restoration in terms of Rule 66 of the 2002 Rules.
- The practice of informing the registered proprietor of any deficiency in renewal application is not inconsistent with International Rules or Practice– The Petitioner in the case had submitted that the practice of communicating deficiency in renewal application was inconsistent with International Law and practice. The Court in this context made reference to Kerly’s Law of Trademarks and Trade name which stated that under the 1994 Act, marks are registered and renewed for period of 10 years. The process of renewal begins with the Registry sending a notice to the proprietor informing him of the date of expiry and the manner in which the registration may be renewed. At any time within the six months prior to the date of expiry, the proprietor effects renewal of his registration by filing Form TM11 together with the appropriate fee. Renewal takes effect from the date of expiry of the previous registration.
- Mark is not immediately removed on non-payment of renewal fee- 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.
- In terms of Section 25(3) of the Act, the Registrar is required to send a notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees, upon which renewal of the registered trademark may be secured by the registered proprietor. If those conditions are not met, the Registrar may remove the trademark from the Register. Thus, even if an application for renewal with the prescribed fees and surcharge is received within a period of six months from the expiry ofthe registration of the trademark, the Registrar cannot remove the trademark from the Register.
In view of the aforesaid facts and prevailing law, the Court observed that in the instant case the Trademark Registry had not adhered to the timelines as required and hence Respondent could not be penalised for the same. The Court held that the Respondent filed the renewal application well within the period of six months and even though the same was not accompanied by a fee of surcharge, the Respondent had the right to know the fate of its application. Since no deficiency was pointed out at the material time, Respondent could not be deprived of its valuable rights to cure the defects within the prescribed period.
The Court in the instant case has emphasized on the legal proposition that a registered proprietor of a trademark cannot be penalized for non-compliance of rules by the Regitrar of Trademarks. Thus, any deficiency in a renewal application has to be communicated to the registered proprietor, so that the proprietor gets the opportunity to cure the defects in application. However, if no deficiency is communicated then the disputed mark cannot be later removed from the Register.
1Rule 66 of Trademark Rules
2W.P. (C) 5568/2017