Delhi High Court holds that a Trademark cannot be removed for non renewal without giving notice to the proprietor

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Appellant: Union of India – Registrar of Trademarks

Respondent: Malhotra Book Depot

Trademark: MBD

Court: Delhi High Court

Coram: Honourable Chief Justice Murugesan D. And Justice Rajiv Sahai Endlaw

Facts:

The respondent, Malhotra Book Depot was a partnership firm which registered the mark MBD on November 23, 1970. The registration was subsequently renewed once in 1977. Over the years the partnership changed twice and when the most recent partners applied for a legal use certificate of the trademark registration (certified information of the mark from the Trademark Office). They were informed that there was no information of the trademark registration on the records of the trademark office (something that TM lawyers in India are quite used to hearing). Upon further investigation the Officials informed the Respondents that the mark had not been renewed and so it was removed from the records of the trademark office. The Responded then filed an application to restore the mark on 17 October 2010 which was not accepted on the ground that it was filed over one year after the expiry of the trademark.

The Respondents filed a writ before the Delhi High Court asking them to direct the officials to restore the mark. The Single Judge heard both parties and ordered on November 29, 2011 that the mark be restored and renewed.

The Case before the High Court was now an appeal from the order of the Single Judge.

Issues:

  1. Can a trademark registration be removed from the Register without giving notice to the Proprietor?
  2. Can a trademark registration be restored before or after the trademark is removed from the register?
  3. Can a trademark registration that is not renewed still be treated as a Registered trademark?

Since the Judges went into the interpretation of the Sections of law, I have listed them out below:

Section 25:

(1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

Section 26:

Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either—

(a) that there has been no bona fide trade use of the trade mark which
has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

Appellant’s contention:

Sending a notice to the proprietor of the trademark registration requesting for renewal before the expiry of the registration is not mandatory.

The mark can be restored only within one year of the expiry of registration i.e. November 23, 1985.

Respondent’s Contention:

Sending a notice to the proprietor of the trademark registration requesting for renewal before the expiry of the registration is mandatory.

If the appropriate procedures for removal of a trademark are not followed, then a trademark cannot be removed.

Restoration of a mark can be made only after a mark is removed.

Judgement:Trademark cannot be removed for Non renewal without giving notice

The Court held that “the subjects of duration, renewal and restoration of registration are interlinked to each other and one must begin at the beginning and legislative provisions cannot be read bereft of their placement and context. The process of sending the notice to the proprietor is mandatory and failure by the Office to follow the procedure in removing the mark stops all the subsequent requirements” i.e. the one year restoration deadline.

Restoration of a mark applies only after the mark is removed as per Section 25 and 26. Since the Act does not provide limitation for restoration of the mark where it has been removed without following procedures individual circumstances have to be taken into consideration including whether the same or a similar mark has in the interregnum being registered by any other person etc.

A mark even though it has been removed still has legal rights which extends even one year after the mark has been removed, provided it has still been in use and no other similar mark has been registered.

In the present case, Registrar was ordered to restore and renew the mark after determining if  the respondent was the registered proprietor/successor of the registered proprietor of the registered trademark which has expired and that in the interregnum same or similar marks had not been registered.

What this means to a Trademark Holder:

Frankly we are yet to see how this will work out practically. While the Judges have ordered for this specific case alone, the actual holding seems against what is generally practiced by the Trademark Office.  While the order seems logical even more than accurate interpretation of the statute there are several concerns.

  1. What happens if the mark has crossed its validity by one year but is not removed? Does one file an application for renewal along with surcharge based on the fee or an application for restoration? (as per the rules now)
  2. What happens if I file an application to take over a file, which has not been recorded as yet and the Notice gets sent to the previous counsel by mistake? (happens all the time).
  3. There are many marks on the Register that are not yet removed though they have crossed their validity, can they all be restored?

I guess at this point we will have to wait and see if this judgment is overruled or upheld. Until then we will probably have to file applications based on the Trademark Office’s procedure or file writs like the respondent did!

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