Procedure not to bar right to renew trademark

By Naman Jain, LexOrbis
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Under the Trade Marks Act, 1999, within one year from the expiry of a trademark, the registered proprietor can save the mark from removal from the Trade Marks Register by paying the renewal fee along with a surcharge fee (within six months from the date of expiration) or restoration fee (after six months but within one year from the date of expiration). However, sometimes such renewal requests become contentious and result in litigation. In the recent case of M/S Epsilon Publishing House Pvt Ltd v Union of India & Ors, a division bench of Delhi High Court upheld the decision of Justice Vibhu Bakhru, which was based on his in-depth analysis of the provisions relating to renewal and restoration of a registered trademark.

Naman JainAssociateLexOrbis
Naman Jain
Associate
LexOrbis

In this case, the dispute was between Epsilon Publishing House, owner of the trademark Easy Notes, and Pardeep Kumar Jain, owner of the trademark Lokpriya Easy Notes, both registered in class 16. Jain’s mark was due for renewal in 2011. The application for renewal, which was filed a few days after the expiry of the registration, was processed by the Trade Marks Registry and allowed after a gap of six years, in 2017.

Epsilon objected by contending that the renewal should not have been granted by the registry due to a deficiency in the renewal request and referred to section 25(3) of the Trade Marks Act, which provides that if a renewal request is filed after the expiry of a trademark, the renewal fee accompanied by a surcharge must be paid within six months from the date of expiration of the previous registration. Epsilon also pointed out that the surcharge had not been paid within this time and, therefore, the renewal request filed for the registration in question should not have been processed.

To counter this argument, the respondents claimed that when this deficiency was highlighted by the registry for the first time in 2017 and the surcharge was demanded, Jain paid the surcharge and then the renewal request was processed.

Justice Bakhru rejected Epsilon’s arguments and observed that if the trademark must automatically be deemed to be removed from the Trade Marks Register after the expiry of 10 years, the registered proprietor would be deprived of the prescribed grace period of six months in the proviso to section 25(3). Special attention was given to the wording of section 25(3), which says “Registrar may remove” and not “shall remove”.

This provision prohibits the registrar from removing the trademark if the renewal request is made within six months and the appropriate fee and surcharge is paid. The single judge emphasized that under rule 58 of the Trade Marks Rules, 2017, the registry has the duty of notifying the registered proprietor about the approaching expiration of the trademark. The judge also emphasized the registrar’s responsibility to point out the defects in the renewal application, so that the registered proprietor gets the opportunity to rectify them.

The judge further observed that rule 59 of the Trade Marks Rules states that if the registrar decides to remove the mark from the Trade Marks Register due to non-payment of renewal fees, it is required to advertise such removal. In this case, since the renewal request filed in 2011 was not taken up by the registry for six years, the defect of deficit fee was not brought to the attention and knowledge of Jain. When the renewal application was finally processed and the registry demanded the surcharge, it was duly paid by Jain. Therefore, the renewal request was allowed within the ambit of the law.

As a final argument, Epsilon contended that the court should consider its third-party rights, which were affected due to delay on the part of the registry that led to acceptance of the renewal request. The judge rejected Epsilon’s contention by stating that the matter of renewal of a trademark is strictly between the registry and the registered proprietor and any interest of the affected party would only arise when the registration in question has been removed. Further, with regard to getting the third-party rights affected, the court stated that the aggrieved party always has the option of filing an application for rectification of the register, which Epsilon had already initiated in the present case.

After observing and scrutinizing all the legal points of the case, the judge upheld the registry’s decision to renew Jain’s rights in the mark Lokpriya Easy Notes. He was also of the opinion that fault or delay on the part of the registry should not hamper the rights of the proprietor of a registered trademark.

Naman Jain is an associate at LexOrbis.

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