Back
IN THE HIGH COURT OF JUDICATURE AT MADRAS
SENTHILKUMAR RAMAMOORTHY, J.
Ashok Kumar Sethi & Anr. - Appellants
Versus
The Registrar of Trade Marks, Office of the Trade Marks Registry, Chennai - Respondent
CMA(TM) No. 6 of 2023
Decided On : 12-10-2023
Trade Mark Renewal - Trade Mark Registration - Trade Marks Act, 1999, Section 25(3), Rules 57 & 58 - The court discussed the delay in renewal of a trade mark registration, the communication of registration certificate, and the renewal process under Rules 57 & 58 of the Trade Marks Rules.
Fact of the Case:
The appellant's request for renewal of a trade mark registration was rejected due to delay in submission. The appellant argued that the delay was due to lack of communication regarding the registration certificate and renewal notice.
Finding of the Court:
The court found that the rejection of the renewal request was unjustified, considering the delay in communication of the registration certificate and renewal notice. The court set aside the impugned order and directed the Registrar of Trade Marks to accept the renewal fees and renew the trade mark registration.
Issues: Delay in renewal request, communication of registration certificate and renewal notice.
Ratio Decidendi: The court held that the rejection of the renewal request was unjustified due to the delay in communication of the registration certificate and renewal notice, as per Rules 57 & 58 of the Trade Marks Rules.
Final Decision: The impugned order was set aside, and the Registrar of Trade Marks was directed to accept the renewal fees and renew the trade mark registration.
JUDGMENT
(Prayer: Civil Miscellaneous Appeal (Trade Marks) filed under Section 91 of the Trade Marks Act, 1999, praying to allow the Appeal against the order of the respondent dated 24.03.2021 and set aside the same and direct the respondent to accept the renewal request filed by the appellant in respect of Trade Mark Application No.728906 dated 02.09.1996 in Class 03.)
1. This appeal is directed against an order dated 24.03.2021 by which the request for renewal of Trade Mark No.728906 in Class 3 of the Register of Trade Marks was refused by citing the delay in the submission thereof.
2. The appellant applied for registration of the Trade Mark 'BLACK GOLD' in Class 3 on 02.09.1996, claiming user since 06.07.1993. The application was opposed by Mr.Ved Prakash Malhotra trading as M/s.S.P.Products (India) and such opposition was registered as Opposition No.720480. Upon hearing the applicant and the opponent, by order dated 31.01.2013, the opposition was rejected. Thereafter, the registration certificate was issued on 31.05.2017. Since such registration dated back to 02.09.1996 (date of application), the appellant filed renewal application in Form TM-R on 18.04.2018. A sum of Rs.18,000/- was remitted as renewal fees. Pursuant thereto, a renewal certificate dated 22.04.2018 was issued for renewal of registration for a period of 10 years from 02.09.2006. The record reflects that a notice under Section 25(3) of the Trade Marks Act, 1999 (the Trade Marks Act) was issued by the Registrar of Trade Marks on 02.07.2018 informing the appellant that the registration would expire on 02.09.2016. Thereafter, the appellant, by communication dated 23.08.2018, called upon the Registrar of Trade Marks to renew the registration for the next block of 10 years from 02.09.2016 to 02.09.2026. This request was rejected by the impugned order.
3. Learned counsel for the appellant invited my attention to the order dated 31.01.2013 by which the opposition was rejected. She then pointed out that registration certificate dated 31.05.2017 appears to have been uploaded about 4 years later without communicating the same to the appellant. Once the appellant came to know of the registration certificate, the appellant endeavoured to renew the registration for 2 blocks of 10 years each by filing Form TM-R on 18.04.2018. According to learned counsel, the registration fee for online renewal is Rs.9,000/- per renewal and, therefore, the aggregate renewal fee of Rs.18,000/- was paid for renewal for 2 blocks of 10 years extending up to September 2026. Learned counsel submitted that the registration was renewed for the first block of 10 years from 02.09.2006 to 02.09.2016. As regards the second block of 10 years, she submitted that the request for renewal was not processed. Turning to the communication dated 02.07.2018, learned counsel submitted that such communication was not received by the appellant and was merely uploaded on the website. Upon coming to know of this communication, the appellant endeavoured to renew the registration from 02.09.2016 to 02.09.2026, but such request was refused under the impugned order. In these facts and circumstances, learned counsel contended that the impugned order is liable to be set aside.
4. In response to these submissions, Mr.C.Samivel, learned SPC, submitted that the application for renewal was submitted more than 2 years and 11 months after the lapse of the period prescribed for such renewal. Therefore, he submitted that the rejection of the request for renewal was in accordance with the Trade Marks Act and the Trade Marks Rules, 2017 (the Trade Mark Rules). In response to the question as to whether the Trade Mark Certificate dated 31.05.2017 was communicated to the appellant, learned counsel submitted that the records do not contain evidence of the communication thereof to the appellant. Likewise, as regards the RG-3 notice dated 02.07.2018, learned counsel states that the records of the Trade Marks Registry do not contain evidence
The central legal point established in the judgment is that the rejection of a renewal request should be justified, considering the communication of registration certificate and renewal notice, as pe....
The central legal point established in the judgment is the interpretation of Section 25(3) of the Trade Marks Act, emphasizing the mandatory nature of the renewal notice and the entitlement of the pe....
The court established that the Registrar's failure to notify the registered proprietor of trademark expiration allows for renewal applications by the assignee as long as the trademarks remain registe....
The main legal point established in the judgment is the importance of justifying undue delay in seeking renewal of a trademark and the necessity of compliance with statutory provisions.
Registered trademark proprietor entitled to portal access or physical renewal application despite delay.
The Registrar of Trade Marks must issue notices under Section 25(3) to the registered proprietor to ensure compliance before trademark removal; failure to do so enables renewal despite lapse.
The court directed the Registrar to correct the status of the expired trade mark on the website of the Registrar of Trade Marks.
The voluntary nature of abandonment, the strict construction of Section 21(2) of the Trade Marks Act, and the importance of valid service of opposition notices.
A trademark application may be reconsidered if the applicant can demonstrate that prior decisions were not communicated, allowing for appeals beyond the standard time limit under specific circumstanc....
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
