Timeliness in responding to trademark examination reports is crucial, and delays not condoned; rights in the mark persist despite abandonment.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present appeal has been filed challenging the impugned order dated 29th March, 2016 passed by the Respondent -Registrar of Trade Marks by which the Trademark Application No.2380329 of the Appellant for the mark '' (JAGRAN) in Class 12, was abandoned on the ground of non-prosecution due to non-filing of the reply to the examination report.

3. The said Trademark Application for the mark `JAGRAN' along with the device was filed in class 12 on `proposed to be used' basis by the Appellant -Jagran Prakashan Limited on 16th March, 2012. The goods in respect of which the said application was filed were `Vehicles, apparatus for locomotion by land, air and water'. The said application was examined and the First Examination Report ("FER") was issued on 31st July, 2013.

4. The same was communicated to M/s. Romesh Chadha & Co., the trademark agent of the Appellant. However, the Appellant did not file a reply to the said FER. Vide impugned order dated 29th March, 2016, the trade mark was abandoned with the following reasoning:

"ORDER

The abovementioned application was examined and the examination report mentioned therein the objection(s) to acceptance of the application for registration of the trademark was posted on the official website and was also sent on 25/03/2015 to the applicant/applicants authorized agent. The response to the examination report was required to be submitted on behalf of the applicant within one month from the date of receipt of the examination report.

It was clearly mentioned in the examination report that if no reply is received or a request for a hearing is applied for within the above mentioned stipulated time, the said application shall be treated to have been abandoned for lack of prosecution under Section 132 of the Trade Marks Act, 1999 and thereafter the status of the application in the computer database shall reflect the factual position. However no response to the examination report has been received so far either mentioning the applicant's comments on office objections or requesting for hearing.

The abovementioned application is therefore deemed to have been abandoned under Rule 38(5) of the Trade Marks Rules, 2002 and the status of the application is changed accordingly in the records of the Trade Marks Registry."

5. Ld. Counsel for the Appellant submits that the present appeal was filed before the IPAB sometime in August, 2020. However, the same has been transferred to this Court due to the enactment of the Tribunals Reforms Act, 2021.

6. The case of the Appellant is that the Appellant owns several trademarks, including `DAINIK JAGRAN', `JAGRAN', `JAGRAN' devices, etc. in various classes, and is also seeking protection of the mark `JAGRAN' as a well-known trademark itself. It is submitted that the Appellant ought not to be prejudiced due to the fault of the trademark agent, who did not inform the Appellant.

7. It is noticed that the FER cites two other trademarks in Class 12 for the mark `JAGRAON EXPORTS (INDIA)' and `JAGRAON JE'. The said FER ought to have been replied to by the Applicant/Appellant, within the time prescribed in accordance with law.

8. In the opinion of this Court, the Appellant has approached this Court very belatedly. The impugned order dated 29th March, 2016 was also passed almost three years after the issuance of the FER. Thus, the delay in filing the reply to the FER, as also, in filing of the present appeal is too long to be condoned. Hence, this Court is not inclined to condone the delay in filing the present appeal. The appeal is accordingly dismissed on the ground of being barred due to