March 13, 2018
In the case, the Appellant who was aggrieved by Delhi High Court’s judgment approached the Division Bench of the Delhi High Court. In the case, the Single Judge of the Court had dismissed its writ petition by which the renewal of trademark “LOKPRIYA EASY NOTES” was challenged.
Single Judge’s order in the case in detail has been analyzed here.
Brief facts of the case are that 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.
The Single Judge in the case ruled that the Respondent’s trademark LOKPRIYA EASYNOTES was not liable to be removed from the Register of Trademark on the ground that it is the Registrar’s duty to inform registered proprietor of the mark about approaching expiration of the mark.
In appeal, it has been prayed that the impugned order overlooks Section 150 of Trademark Act, 1999 which states that where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fee has been paid. In context of facts of the instant case, the Appellant submitted that the surcharge which ought to have been paid under Section 25(3) of the Act, i.e. within six months of the date of expiration of the trademark registration, was actually deposited on 17.04.2017. Thus, the filing in terms of Section 150 was in fact from 17.04.2017.
Delhi High Court Observation and Holding in the case
The Division Bench of the Delhi High Court in the case dismissed the Appeal while observing that:
- That the text of Section 150 of Trademark Act, 1999 seems to suggest that if a fee is prescribed for the doing of a thing or for submission of an application, the absence of such fee would result in the application being treated as having not been filed. At the same time, the Court is cognizant of the fact that the application was made on 19.05.2011, i.e. within a six month period. The defect, as it were, with respect to the surcharge shortage, came to the notice of the authorities in 2017 when notice was issued in that regard.
- That the new rules came into effect on 26.07.2017. Furthermore, the basic grounds for challenge of the trade mark registration, i.e. in the pleadings in the rectification application right upto 2015, were not that the registration had lapsed. It was on the basis that the mark was misleading. The Court also notes that the suit alleging infringement was filed only in 2015.
- That the renewal, in the facts of this case could not be characterized as illegal, is reasonable; there is no infirmity in the impugned judgment.
The Division Bench’s Judgment can be accessed here.