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IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, J.
M/S Epsilon Publishing House Pvt. Ltd. - Petitioner
Versus
Union of India And Ors. - Respondents
W.P.(C) 5568 of 2017 & CM No. 23379 of 2017
Decided On : 18-09-2017
Trademark Renewal - Trade Marks Act, 1999 - Section 25(3), Rule 11(5) of the 2002 Rules - Summary of Acts and Sections: The court discussed the provisions of Section 25(3) of the Trade Marks Act, 1999 and Rule 11(5) of the 2002 Rules, highlighting the requirements for renewal of a trademark, the consequences of non-compliance, and the discretion of the Registrar in removing a trademark from the register.
Fact of the Case:
The petitioner challenged the renewal of a trademark 'LOKPRIYA EASYNOTES' by the Registrar of Trademarks, claiming that it was beyond the scope of the Trade Marks Act, 1999. The petitioner argued that the renewal was not filed within the prescribed period and was not accompanied by the required surcharge.
Finding of the Court:
The court found that the Registrar's decision to renew the trademark was valid, as the application for renewal was made within the six-month grace period allowed by Section 25(3) of the Act. The court also noted that the Registrar did not follow the prescribed procedure for notifying deficiencies in the renewal application, and therefore, the trademark could not be removed from the register.
Issues: The issues revolved around the interpretation of the provisions of Section 25(3) of the Act, the requirements for renewal of a trademark, and the consequences of non-compliance with the renewal process.
Ratio Decidendi: The court held that the Registrar's decision to renew the trademark was in accordance with the law, and the petitioner's contention that the trademark should have been removed was unsustainable. The court emphasized the importance of adhering to the prescribed timelines and procedures in the renewal process.
Final Decision: The petition and the application were dismissed, upholding the Registrar's decision to renew the trademark 'LOKPRIYA EASYNOTES' in favor of respondent no.3.
VIBHU BAKHRU, J.
1. The petitioner has filed the present petition, inter alia, impugning the order dated 04.05.2017 (hereafter 'the impugned order'), passed by the Registrar of Trademarks (hereafter 'the Registrar').By the impugned order, the Registrar has renewed the trademark 'LOKPRIYA EASYNOTES' bearing no. 1006905 in class 16 for a period of 10 years in favour of respondent no.3. The petitioner claims that this renewal is beyond the scope of provisions of the Trade Marks Act, 1999 (hereafter 'the Act') and the rules framed there under, namely, the Trade Marks Rules, 2002 (hereafter 2002 Rules') and/or the Trade Marks Rules, 2017 (hereafter 2017 Rules').
2. It is the case of the petitioner that the trademark in question - that is, 'LOKPRIYA EASYNOTES'-expired in 2011 and since respondent no.3's application for renewal was not filed along with the prescribed fee surcharge, the said trademark was required to be removed from the register maintained by the Registrar.
3. Briefly stated, the relevant facts necessary to address the controversy raised in this petition are as under:-
3.1 The petitioner is a company incorporated under the Companies Act, 1956 and claims to be engaged in the business of printing educational books/guides and other printing material since 2000. The petitioner states that it adopted the trademark ‘EASY NOTES’ in the year 1999 and the said trademark has been used by the petitioner in respect of guidebooks and other printed material continuously since its adoption in 1999. The petitioner further states that it has secured the registration in respect of its trademarks, 'EASY NOTES' (Regn. No. 1590623) in class 16; 'E.A.S.Y.' (Regn. No. 1409455) in class 16; and 'EPSILON' (Regn. No. 1107286) all in class 16. The aforesaid marks are subsisting on Register of trademarks.
3.2 It is stated that in the year 2015, the petitioner filed a civil suit for permanent injunction, passing of, infringement of trademark and rendition of accounts and damages against respondent no.3, in the District Court, Kanpur (Original Suit No. 05 of 2015) in relation to the use of the trademark 'LOKPRIYA EASYNOTES'. On 30.05.2015, the District Judge, Kanpur passed an ex parte order restraining respondent no.3 from using the trademark EASY NOTES with the pre-fix ‘LOKPRIYA’ or any other prefix or suffix and passing of the goods as that of the petitioner (plaintiff there in).It is stated that respondent no.3 filed a written statement contesting the suit, inter alia, claiming that it was a prior user of the trademark ‘LOKPRIYA EASY NOTES’ and had been using the said mark since 1977.
3.3 Respondent no.3 applied for registration of the trademark ‘LOKPRIYA EASY NOTES’ on 02.05.2001 and the same was registered on 07.03.2007 under registration no. 1006905 in class 16.The said trademark was registered after due advertisement in the trademark journal.
3.4 The petitioner applied for registration of the trademark 'EASY NOTES' on 14.08.2007, which was registered in its favour on 25.03.2010.
3.5 The registration of the trademark ‘LOKPRIYA EASY NOTES’ in favour of respondent no.3 was for a period of ten years (that is, from 02.05.2001 to 02.05.2011).
3.6 Respondent no.3 filed an application for renewal of the trademark 'LOKPRIYA EASY NOTES' on 19.05.2011. Thereafter, on 13.03.2013, the petitioner filed a petition before the Trademark Registry seeking cancellation of the registration of the trademark ‘LOKPRIYA EASY NOTES’ in favour of respondent no.3.
3.7 It transpires that subsequently the petitioner also filed a request for obtaining certified documents relating to respondent no.3's trademark application for the registration of the trademark ‘LOKPRIYA EASY NOTES’. In response to the said application, the petitioner was informed by a letter dated 17.09.2013, that the trademark ‘LOKPRIYA EASY NOTES’ did not appear to be renewed.
3.8 Thereafter, on 22.05.2015, the petitioner filed a suit for permanent injunction before the District Courts, Kanpur, inter ali
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