Recent Important Judgments on Trademark Law in India

0
6121

June 28, 2018

Delhi HC: MNC’s can’t claim right on Trademark if they don’t use it in India

Case name: Munish Kumar Singla Trading as Chakshu Food Products v. Jollibee Foods Corporation

In this recent case, the Supreme Court was confronted with non-use of the impugned trademark and made a scathing attack on grant of injunction by the Trial Court in the case on the very first day of decreeing the suit itself.

Factual Matrix in the case- The respondent is owner of fast food brand under the trademark ‘Jollibee’. The word mark ‘Jollibee’ was along with an image mark of a bee. The respondent in the case admitted that though the trademark ‘Jollibee’ with the image of a bee was registered in favour of the respondent way back in the year 2005, and from the year 2005 till today in the year 2017, the Respondent has not yet commenced its business in India. That the registrations of Respondent’s trademark is on the basis of “proposed to be used basis”.

The Respondent was aggrieved by alleged use of deceptively similar mark with the image of bee by the Appellant and prayed for injunction to restrain the appellant from using the impugned mark. The Trial Court in the case granted injunction to the Respondent. Aggrieved by Trial Court’s order, the Appellant approached the Delhi High Court.

Delhi High Court’s Order and Observation

  • That as per the facts of the case, the Respondent in spite of registration of its trademark since the year 2005 has till now not commenced business in India. In such admitted facts of a case as per the plaint itself where the respondent has not commenced business in India.
  • Dissimilar business of parties-That the business of the Respondent is of a fast food chain and food products and the business of the Appellant is selling of packaged spices.
  • Delay in Seeking Ex-parte Injunction- That the respondent was aware about the existence of the appellant since November 2016 i.e. since when the appellant sought registration of wordmark ‘Chakshu’ with an image of bee. Therefore, on filing of the suit many months later in August 2017, respondent was hit by the principle of delay for not seeking an ex-parte injunction.
  • Non-Use of Trademark by Respondent- The Delhi High Court opined that in the present case, there was really no jurisdiction in the trial court to grant ex-parte order as the respondent had not commenced business in India in spite of registration of its trademark in India since the year 2005.

In this context, Delhi High Court made reference to Supreme Court’s verdict in the case of Milmet Oftho Industries and Others vs. Allergan Inc.[1]wherein it was held that multinational companies have no right to claim exclusivity of the trademark if they do not enter or intend in a reasonable time to enter into business in India and which observations squarely apply in the facts of this case where in spite of registration since the year 2005 till today in the year 2017 the respondent has not commenced his business in India.

In view of the aforesaid, Delhi High Court allowed the appeal and set aside Trial Court’s order.

Section 47 of Trademark Act, 1999 provides for removal of trademark from register on grounds of non-use of the mark. It provides that a registered trademark may be taken off the register in respect of goods or services in respect of which it is registered on application made in the prescribed manner. According to the statutory provision, any person who is aggrieved that a registered trademark has not been used for a continuous period of 5 years and 3 months from the date of which the mark was actually entered in the register of trademarks then he can make an application for removal of the trademark from the Register.

Rights of Prior User of Trademark Prevails over Registered Proprietor

Case name: M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited

In this recent judgement passed by the Delhi High Court, the Court recognized the legal principle of Prior user of a mark. The Court’s verdict in the case has reiterated the law that prior user of a trademark will override the subsequent user even if the subsequent user has registered the trademark. 

Brief Facts of the case- The instant case was instituted by one, Rajeev Kumar who claimed to be the sole proprietor of M/s. R.J. Components & Shafts (Plaintiff Company) against the Defendants to restrain them from in any manner using the Plaintiff’s registered trademark NAW.

The Plaintiff alleged that the Defendants in the case who are also engaged in a similar business have recently started manufacturing gears and have adopted an exactly similar trademark NAW of the plaintiff.

Court’s Order

As stated earlier, the Delhi High Court in this case recognized the prior user right as the superior right which also prevails over the registered proprietor of a similar or identical trademark. In view of the aforesaid facts, the Delhi High Court injuncted the Plaintiff from using the mark NAW and made the following observations:

Lack of Evidence- In the case, the Court stated that in spite of several opportunities the Plaintiff had failed to produce any evidence and no credible evidence had been adduced by the Plaintiff to controvert the Defendants’ assertion that they were prior user of the mark NAW since 1971.

Defendant is Prior User of the Mark- The Court found that on examination of evidentiary documents like cash memos and other documents pertaining to the period 1971 onwards on the letterheads the defendant, the trademark NAW has been prominently used. Such documents establish beyond doubt that the mark NAW was being used extensively by the Defendant since 1971 and hence Defendant is a prior user of the trademark NAW.

Rights of Prior User of Trademark in India

It is a well settled principle of Trademark Law that prior use of the goods will override the subsequent user, even though subsequent user has a registered trademark. Thus, the rights conferred by registration of trademark is subject to the rights of the prior user of the mark. In a recent case the Supreme Court in the case of S. Syed Mohideen v. P. Sulochana Bai had held that the scheme of the Act is such where rights of the prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb interfere with the rights of the prior user.

Statutory recognition to the aforesaid principle can be found under Section 34 of the Trademark Act, 1999which enumerates that a registered proprietor or registered user of a trademark cannot interfere with the use of any identical or similar mark is a person has been using a mark from an earlier date. Another recent case which establishes a similar legal proposition is the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., wherein the Supreme Court opined that a registered proprietor of a trademark does not possess the right to prevent use by another party of an identical mark if that use commenced prior to the use of the registered mark.

In view of the aforesaid settled Law, it is advisable that companies and individuals who are seeking trademark registration in India shall conduct a prior trademark search of similar marks which though not registered are in being used prior to registration of their trademark.

Delhi HC: Delay Simpliciter is no Defence in Trademark Infringement Suit

Case name: Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels

In this case, the Delhi High Court delved into the law of acquiescence. In the case the Plaintiff was aware of the Defendant’s mark and still did not take any action for long. In view of the settled position of law of acquiescence, the Court did not restrain the Defendant from using the mark GETMYTRIP which Plaintiff alleged was deceptively similar to its mark MAKEMYTRIP.

Background of the case- In the instant case the Plaintiff i.e. MakeMyTrip filed suit to restrain the defendants, from in any manner using the trademark GETMYTRIP that allegedly infringed the plaintiff’s trademark MakeMyTrip.

Bench’s Verdict

In the case, the Delhi High Court denied any relief to the Plaintiff in view of the following observations:

Plaintiff had knowledge of GETMYTRIP mark- That though the defendant claimed user in the application since 2016, however the fact remained that plaintiff with the same trademark and domain name i.e. GETMYTRIP and www.getmytrip.com respectively had been dealing with the Hermes which is the predecessor-in-interest of the defendant at least since 2011, thus Plaintiff had knowledge of this trademark and domain name being used.

The Delhi High Court opined that in the present case the issue was not of delay and latches only but of acquiescence where the plaintiff to its knowledge permitted continued user by Hermes of the trademark GETMYTRIP and domain name www.getmytrip.com , however now to its transferee-in-interest i.e. the plaintiff has objection to it on the sole ground that Hermes never operated in B2C domain but in B2B domain. In this regard it would be appropriate to note the documents filed by the defendant placing on record copies of the screenshot of websites of Hermes dated 10th January, 2012 showing its B2C user falsifying the claim of the plaintiff that Hermes was not operating in the B2C space.

The Delhi High Court made reference to the case of National Bell Co. v. Gupta Goods Manufacturing Co. (P) Ltd. & Anr.[2]wherein the Supreme Court held that if a registered proprietor of a mark ignores repeated infringements of its mark than it can even be considered as an abandonment of its mark. With reference to the instant case, the Court noted that the plaintiff was aware of the use of the trademark GETMYTRIP since 2011 and admittedly since 2013. Thus despite the use of the trademark GETMYTRIP plaintiff continued its business dealings with Hermes which is the predecessor-in-interest of the defendant.

Law of Acquiescence- To arrive at its decision, the Delhi High Court made reference to the case of Power Control Appliances v. Sumeet Machines (P) Ltd.[3] wherein it observed that Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches.

That Delay simpliciter may be no defence to a suit for infringement of a trade mark. That where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rival’s business. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood.

That it is settled that the registered proprietor of trademark is not expected to pursue each and every insignificant infringer who is of no consequence to his business. In the present case, Hermes was holding a substantial share in the market place. It cannot be said that Hermes was an insignificant infringer. As noted above Hermes was also working in B2C space thus competing with plaintiff’s business.

In view of the aforesaid legal proposition and the fact that the Plaintiff suppressed material facts, the Court stated that no case was made out against the Defendant.

Delhi HC on Barbie Trademark and its Use in a Bollywood Song

Case name: Mattel, Inc. & Anr. v. MS. Aman Bijal Mehta & Ors.

Date of Judgment- November 22, 2017

Abstract

In this case recently taken up by the Delhi High Court, the Court was confronted with alleged misuse of the Plaintiff’s well-known trademark BARBIE in a Bollywood song. The Plaintiff prayed to restrain the Defendants from using the trademark in their upcoming movie Tera Intezaar. However, the Plaintiff was denied relief in the case.

Background of the case: In the case, Plaintiffs claimed to be the owner of “BARBIE” trademark used in relation to toy dolls and other merchandise related to or connected to the toy doll named “BARBIE”. The Plaintiff contended that they have produced or licensed the product to numerous motion pictures based on plaintiffs’ world famous “BARBIE” brand. The Plaintiffs further stated that around November 15th they came across a music video on YouTube of a song titled “Barbie Girl” from the movie Tera Intezaar scheduled to be released on 24th November, 2017 and alleged that the the title and lyrics of the song used their registered and well known trademark “BARBIE” without their authorisation.

The Plaintiff also alleged that the lyrics of the impugned song were suggestive of an adult woman who is sexually attractive and enticing and that the contents of the impugned song / its video were not suitable for children and are provocative and inappropriate for younger girls and children, tarnishing and degrading the distinctive quality of the mark “BARBIE”.

Delhi High Court’s Order and Observation

In the case while pronouncing its order, the Delhi High Court made reference to the famous song “Lets go party”, also with the name “BARBIE” and stated that the lyrics of the said song was also provocative. The Plaintiff in this context informed the Court that they had moved application against “lets go party” song on the ground that the song was inappropriate for young girls however, the United States Court of Appeal, Ninth Circuit denied relief to the Plaintiff and held that music use of “BARBIE” mark in song was not an infringement of toy manufacturer’s trademark associated with the doll and that the trademark rights do not entitle the owner to quash an unauthorized use of the trademark by another who is communicating ideas or expressing points of view.

In view of facts and circumstances of the case, the Delhi High Court made reference to a recent verdict of Supreme Court in the case of Nachiketa Walhekar Vs. Central Board of Film Certification, (read here), wherein a writ had been filed for staying the release of a film namely “An Insignificant Man” as it contained a video clip pertaining to the petitioner.

Also read SC Upholds Freedom of Speech and Expression of Filmmakers

In the case some noteworthy observations made by the Supreme Court are:

  • That freedom of speech and expression is sacrosanct and the said right should not be ordinarily interfered with.
  • That when the CBFC has granted the certificate and only something with regard to the petitioner, which was shown in the media, is being reflected in the film, this Court should restrain itself in not entertaining the writ petition or granting injunction.
  • That a film or a drama or a novel or a book is a creation of art. An artist has his own freedom to express himself in a manner which is not prohibited in law and such prohibitions are not read by implication to crucify the rights of expressive mind.
  • That the Courts shall be extremely slow to pass any kind of restraint order in such a situation and should allow the respect that a creative man enjoys in writing a drama, a play, a playlet, a book on philosophy, or any kind of thought that is expressed on the celluloid or theater, etc.

In view of the abovementioned observations of the Apex Court, the Delhi High Court opined that the law has constituted CBFC to adjudge the need if any for imposing ‘prior restraints’ which otherwise are at serious odds with the fundamental right enshrined in the Constitution of speech and expression.

That once a film has been cleared by CBFC for viewing, there is a presumption in its favour including of the same being not defamatory of any one. If after a film has been so cleared by CBFC, the Courts were to act as super Censor Board at the mere asking, it will have the potential of imposing arbitrary and at times irrational prior restraints causing severe damage to the right of freedom and expression.

TM Renewal: Sending of O-3 Notice Mandatory Prior to TM Removal

Case name: Kleenage Products (India) Private Limited v. The Registrar of Trademarks & Ors. (Bombay High Court)

In this recent case, the Bombay High Court has reiterated the settled principle of Trademark Law that a mark cannot be removed from the register of trademarks for non- renewal unless the Registrar of Trademarks has sent O-3 Notice to the registered proprietor of the mark.

The petitioner in the case was aggrieved by removal of its registered trademark KLITOLIN for non-renewal by the Respondent from Register of Trademarks and accordingly prayed that the Court directs Respondent to allows restoration and renewal the impugned mark.

In the case, the impugned trademark was due for renewal on 21.08.2009. However, inadvertently, petitioner did not tender application for renewal. It is the contention of the petitioner that the respondent also failed to issue the requisite mandatory notice in Form O-3 to the registered proprietor under Section 25(3) of the Trade Marks Act, 1999.

The Petitioner in the case contended that since the respondent had failed to issue O-3 notice, which was a statutory requirement, the respondent should allow restoration and renewal of the said trademark.

The respondents contended that the communication of renewal i.e. O-3 notice under Section 25(3) of the Trade Marks Act, 1999 in respect of the impugned trademark does not appear on record and is not traceable

The petitioner, placing reliance on the judgment in the matter of, Cipla Limited Vs. Registrar of Trade Marks and another contends that respondent No.1 is mandatorily required to issue a notice in Form O-3 and in the absence of issuance of such notice or production of record indicating issuance of such notice, the trademark in question cannot be removed from the register.

Bench’s Verdict and Observations

The Bombay High Court in the case while allowing the Petitioner’s pray made the following observations in the case:

  1. Notice on Form O-3 before removal of trademark from Register– That if the registered proprietor does not make an application for renewal till two months prior to the expiration of the last registration, the Registrar is required to notify the registered proprietor of the approaching expiration (under Rule 67)[1]and is to remove the trademark from the register only thereafter.
  2. That if removal pursuant to non-renewal was to be de hors[2]the notice for removal, Rule 68 would have followed Rule 66 and not Rule 67. Though Rule 68 permits removal upon expiration of last registration and non-payment of renewal fees and does not make the same dependent upon compliance of Rule 67 but to read Rule 68 permitting removal de hors compliance of Rule 67 would be contrary to Section 25(3) of the Trade Marks Act, 1999 which as aforesaid permits removal only if at the expiration of the time prescribed in the notice required to be sent thereunder, the registered proprietor has not applied for renewal.
  3. Absence of documentary evidence relating to O-3 Notice- With reference to the instant case, the Court observed that respondent contended that the record in respect of issuance of O-3 notice is not traceable. In context reference was made to the case of Court Receiver, High Court, Mumbai vs. Registrar of Trademarks and another[3], wherein Division Bench of Bombay High Court held that in the absence of any reliable evidence in support of the stand taken by the respondent that O-3 notices were sent, it was difficult to accept the contention that the O-3 notices were duly sent.
  4. That in the absence of documentary evidence in respect of the contentions raised by the respondent, it cannot be concluded that such notices were sent and the petitioner is in receipt of the same.

SC: Stay Trademark Infringement Suit in case of Rectification Proceeding

Case name: Patel Field Marshal Agencies and ANR. Vs. P.M. Diesels Ltd. and Ors.

In this noteworthy judgment, the Supreme Court has categorically stated that if a proceeding for rectification of the trademark in question is pending before the Registrar or the High Court, and simultaneously a suit for infringement is filed the suit for infringement shall remain stayed.

Brief Facts: The respondent in the case is the registered proprietor of three trade marks, the common feature of all of which is the words “Field Marshal”.

The appellants in the year 1982 applied for registration of the trade mark “Marshal” for their use. Having come to know of appellant’s application and perceiving a similarity between the mark in respect of which registration was sought by the appellants and the mark(s) registered in favour of the respondent, the respondent served a legal Notice on the appellants to desist from using the impugned mark.

Thereafter, in 1989, respondent approached the High Court for infringement of the trademark “Marshal” and for perpetual injunction to restrain the appellants from using the trading styles “Patel Field Marshal Agencies” and “Patel Field Marshal Industries”.

In the case, the Appellants contested the validity of registration of the respondent’s trade mark “Field Marshal” and claimed that the same was liable to be rectified in the trade mark register.

The Delhi High Court dismissed the Respondent’s application for interim injunction on the ground that the High Court did not have jurisdiction, both, pecuniary and territorial, over the subject matter. In appeal, the Division Bench reversed the decision of the single Judge and directed for consideration of the Interlocutory Application for interim injunction on merits and granted temporary injunction in favour of the respondent.

The appellant aggrieved by Division Bench’s order approached the Supreme Court. The seminal issue for consideration that arose before the Supreme Court in the case was:

Where a suit for infringement is pending wherein the issue of validity of the registration of the trade mark in question has been raised either by the plaintiff or the defendant and no issue on the said question of validity has been framed in the suit or if framed has not been pursued by the concerned party in the suit by filing an application to the High Court for rectification under Sections 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958, whether recourse to the remedy of rectification under Sections 46/56 of the 1958 Act would still be available to contest the validity of the registration of the Trade mark.

It would be relevant to mention here that Sections 46, 56, 107 and 111 of Trademark Act, 1958 correspond to Sections 47, 57, 124 and 125 of the 1999 Act.

Bench’s Verdict

That Section 111 of the 1958 Act (corresponds to Section 124 of 1999 Act) which deals with “stay of proceedings where the validity of registration of the trade mark is questioned”specifically provides that if a proceeding for rectification of the register in relation to the trade mark of either the plaintiff or the defendant is pending before the Registrar or the High Court, as may be, and a suit for infringement is filed wherein the aforesaid plea is raised either by the defendant or by the plaintiff, the suit shall remain stayed.

That Section 111 of the 1958 Act cannot be understood to be determinative of the true purport, intent and effect of the provisions contained therein so as to understand the said section to be contemplating only stay of proceedings of the suit where validity of the registration of the trade mark is questioned. Naturally, the whole of the provisions of the section will have to be read and so read the same would clearly show lack of any legislative intent to limit/confine the operation of the section to what its title may convey.

That statutory provisions under the Trademark Act make it cear that questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, infact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the Civil Court.

That all issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court.

That the legislature by enacting Section 111 of the 1958 Act has mandated that the issue of invalidity which would go to the root of the matter should be decided in the first instance and a decision on the same would bind the parties before the civil court. Only if the same is abandoned or decided against the party raising it that the suit will proceed in respect of the other issues, if any.

Delhi HC: Registrar’s Statutory Duty to Inform Proprietor about Trademark Renewal

The Delhi High Court in the case of M/S Epsilon Publishing House Pvt. vs Union Of India2The 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.

Background

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. 

Bench’s Verdict

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 toSection 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 submittedthat 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 Actthe 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.

 

Take away

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.

Related Posts

Licensing of Trade Marks in India

All you Need to know about New Trademark Rules, 2017

Trademark Infringement and Passing off- Law and Important Judgments

Well-Known Trademarks in India: Law and Legalities

Trademark Law in India: Law and Case Laws

[1] (2004) 12 SCC 624

[2] AIR 1971 SC 898

[3] (1994) 2 SCC 448