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HIGH COURT OF DELHI
M/S B.E.C. INDUSTRIES – Appellant
Versus
UNION OF INDIA – Respondent
W.P.(C)-10040/2019
$~1 to 3
*
IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 6th March, 2020
+
W.P.(C) 2325/2010
KISHORE KUMAR
..... Petitioner
Through:
Mr. Neeraj Grover and Mr. Rohan
Yadav, Advocates.
versus
UNION OF INDIA
..... Respondent
Through:
Mr. Gaurang Kanth, CGSC with Mrs.
Biji
Rajesh
and
Ms.
Eshita,
Advocates. (M:9999285585)
WITH
+
W.P.(C) 10040/2019 & CM APPLS. 41542/2019, 52388/2019
M/S B.E.C. INDUSTRIES
..... Petitioner
Through:
Mr. Neeraj Grover, Ms. Avani
Kapoor, Mr. Rudratti and Mr. Rohan
Yadav, Advocates.
versus
UNION OF INDIA
..... Respondent
Through:
Mr. Akshay Makhija, CGSC with Ms.
Nidhi Mohan Parashar, Govt. Pleader,
Ms. Roshni, Mr. Shiram, Advocate.
(M:9953899908) along with Mr.
Pawan Kumar Pandey,
WITH
+
W.P.(C) 11284/2019 & CM APPL. 46493/2019
ASIANET STAR COMMUNICATIONS PVT LTD...... Petitioner
Through:
Mr.
Sumant
Narang,
Advocate.
(M:9810621272)
versus
THE REGISTRAR OF TRADEMARKS & ANR. ..... Respondent
2020:DHC:1618
Through:
Mr. Gaurang Kanth, CGSC with Mrs.
Biji
Rajesh
and
Ms.
Eshita,
Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
W. P. (C) 2325/2010
1.
The Petitioner was the proprietor of the registered trade mark
“HOMELITE” in Class 9 bearing No. 771268. The application for
registration of the trade mark was filed on 6th October, 1997 and the
registration certificate was issued to the Petitioner on 23rd March, 2006.
Sometime in August, 2009, the Petitioner applied for renewal of the trade
mark under TM-12 and TM-13. However, a letter was issued by the
Registrar of Trade Marks to the effect that the renewal fee had not been paid
within the prescribed time and hence, the mark is likely to be removed. The
same was replied to by the Petitioner’s counsel vide letter dated 21st
December, 2009, wherein it was informed that no form O-3 notice had been
received by the Petitioner and hence, the mark could not be removed. The
Petitioner was also willing to file form TM-56 for renewal/restoration along
with any penalty. The status on the Trade Marks Registry’s (hereinafter,
“TMR”) website showed the trade mark as ‘abandoned’. Hence, the writ
petition.
W. P. (C) 10040/2019
2.
The order dated 17th September, 2019 records the factual background
to this petition as follows:
2020:DHC:1618
2020:DHC:1618
not as per procedure and the Rules.”
3.
Thereafter, ld. counsel for the Registrar of Trade Marks has taken
instructions in the matter.
W. P. (C) 11284/2019
4.
The facts of this petition are recorded in order dated 22nd October,
2019 as follows:
High Court in Malhotra Book Depot v. Union of
India & Ors., 2012 (49) PTC 354 (Del.) and Cipla
Limited v. Registrar of Trade Marks & Anr. [W.P.
No.1669 of 2012, decided on 23rd September, 2013]
2020:DHC:1618
has been handed across to the Court.”
W. P. (C) 2325/2010
W. P. (C) 10040/2019 & CM APPLs. 41542/2019 (stay), 52388/2019
(exemption)
W. P. (C) 11284/2019 & CM APPL. 46493/2019 (interim direction)
5.
All the above three petitions raised issues in respect of the renewal of
the respective registered trademarks and the fact that renewal notices (Form
– O3) were not received by the registered proprietors. During the hearing in
these petitions, it was noticed that there was a need for streamlining the
process of registration of trade-marks as O-3 notices were not being sent to
the parties, leading to the abandonment of the marks. Moreover, in one of
the cases, form RG-3 notice, which was introduced in 2017 under the Trade
Mark Rules, 2017, was uploaded in place of the alleged O-3 notice which
was indeed mysterious as the date of the notice was 2nd November, 2016 and
the Trade Mark Rules, 2017 came into effect only on 6th March, 2017.
Under the regime which was prevalent prior to the Trade Mark Rules, 2017,
2020:DHC:1618
only an O-3 notice could have been uploaded and
