The Delhi High Court on March 9, 2018, gave its judgment in the matter of M/S Epsilon Publishing House Pvt. v. Union of India. The main controversy, in this case, was whether a registered trademark owner can be penalized for non-compliance of rules by the Registrar of Trade Marks.
The appeal was filed against the order of Justice Vibhu Bakhru.
Facts of the case
As per the plaintiffs, they had adopted the trademark “Easy Notes” in 1999 for guidebooks and other printed materials. The trademark for ‘’Easy Notes’’ was applied in class 16, they also had applied for the trademark “Epsilon”, also in class 16.
The plaintiff, from some sources, came to know that, third respondent in the present case was using the mark LOK PRIYA EASY noted to conduct their trade. Alleging infringement of their mark, the plaintiffs approached the District Court, Kanpur
The court issued an ex-parte order in favour of the plaintiffs and restrained Jain from using the impugned mark. However, the respondents in their written statement claimed that they have been using the impugned mark since 1977 and was also registered on 07.03.2007 in Class 16.
The petitioners then approached Delhi High Court by way of a writ petition.
Arguments before the Single Bench
The main contention of the plaintiffs was that as the registered mark of respondent expired on 02.05.2011 and there was a delay in filing for renewal, the trademark registry didn’t follow the law when renewal was granted to Jain.
To support their argument, the plaintiffs relied on Section 25(3) of the Trademark Act, as well as Rules 65 and 66 of the Trade Marks Rules.
The relevant parts of the mentioned Acts and Rules have reproduced below for the benefit of the reader:-
Section 25(3) of The Trade Marks Act, 1999
(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 duly complied with the Registrar may remove the trade mark from the register: Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).
Rule 65 and 66 of Trademark Rules,2002
- Advertisement of removal of trade mark from the register. — If, at the expiration of last registration of a trademark, the renewal fees have not been paid, the Registrar may remove the trademark from the register and advertise the fact forthwith in the Journal: Provided that the Registrar shall not remove the trademark from the register if an application for payment of surcharge is made under proviso to sub-section (3) of section 25 in Form TM-10 within six months from the expiration of the last registration of the trademark.
- Restoration and renewal of registration. — An application for the restoration of a trademark to the register and renewal of its registration under sub-section (4) of section 25, shall be made in Form TM-13 after six months and within one year from the expiration of the last registration of the trademark accompanied by the prescribed fee. The Registrar shall, while considering the request for such restoration and renewal have regard to the interest of other affected persons.
The learned Single Judge after a thorough scrutiny of the said provisions came to the following conclusion:
On the issue of whether the registry made a mistake in the renewal process the Judge opined that as per the provision of section 25(3), the register should inform the registered owner by way of notice of the fees to be paid and other formalities to secure the renewal. The Judge also stated that in terms of the language used the word ‘may’ is used instead of ‘shall’ in the Act, when describing the powers to remove a mark from the register due to non-removal.
When considering the arguments of plaintiff that the mark should automatically be removed from the register due to non renewal of registration, the court referred to section 25(4) which states that the registered proprietor has further six months after the expiry of the initial six months from the date of expiry of the registration to seek restoration of the trademark on the Register. The bench was of the view that removing the mark from the registry, without giving a chance to registered proprietor is curbing the right of the registered owner.
The Court also looked whether the procedure followed by the registry was discretionary or not.The court held that even though, the registrar may have erred while following the procedure, a registered owner shouldn’t face the consequences of his actions.
After going through all the contentions, the court opined that there was no wrong done when the registry renewed the impugned mark. The court also dismissed the application filed by the petitioners and allowed Jain to conduct business as usual.
Aggrieved by the said Order of the court, the petitioners approached a larger bench of this court.
While the addressing the larger, the petitioners used a different strategy and stated that they have been using the mark “Easy Notes’’ since 2000. They also stated that even though Jain has registered the mark, they don’t have a bearing on the same matter.
After referring to their same arguments while addressing this bench the petitioners also raised another contention, referring to section 150 of the Trademarks Act which refers to the prescribed fee for renewal.
The petitioners stated that the required fee and surcharge in terms of section 150 were not paid in time so renewal of the mark Jain by the registry was bad in law.
The court rejected this contention stating that after rectification proceeding was initiated, all the prescribed fees and surcharges were paid.
After going through all the contentions raised by the counsels and going through the impugned order the Learned Single Judge, the division bench came to the conclusion that the order of single judge was sound in law and dismissed the petition.
The court also stated that an error on the part of the registry should harm the interests of the trademark owner.
The present order comes as a welcome change because most of the time, the public is left suffering due to no fault of theirs.
Even though the petitioners had argued the case well and raised technical questions, both the Benches of the High Court were quick to point out that a registered owner of a mark cannot be refused renewal or get his/her mark canceled due to a procedural defect on part of any other governing body.
However, in view of the circumstances of this case, it’s highly recommended to get all your compliances done in order to avoid any unnecessary legal hassles.