Malhotra Book Depot vs Union Of India & Ors
2011 Latest Caselaw 5781 Del

12
*      IN THE HIGH COURT OF DELHI AT NEW DELHI

+                    Date of Decision: 29.11.2011


%      W.P.(C) NO.7882/2010

       MALHOTRA BOOK DEPOT                            ..... Petitioner
                    Through:        Mr. Gaurav Pachnanda, Mr Mohit
                                    Goel, Mr. Sidhant Goel and Mrs.
                                    Sangeeta Goel, Advocates
                    versus

       UNION OF INDIA & ORS                            ..... Respondent
                       Through:     Mr. Sachin Datta, CGSC and Mr.
                                    Abhimanyu Kumar, Advocates

       CORAM:
       HON'BLE MR. JUSTICE VIPIN SANGHI


VIPIN SANGHI, J. (Oral)

1. This petition has been preferred by the petitioner under Article

226 of the Constitution of India to seek a writ of mandamus against the

respondents thereby directing them to grant restoration and/or

renewal of the petitioners trademark registration No.268211B dated

23.11.1970 in Class 16.

2. The case of the petitioner is that the petitioner obtained the

registration of the stylized mark MBD under Registration No.268211B

on 23.11.1970 vide certificate dated 20.12.1971 issued by the

Registrar of Trademarks. This registration was lastly renewed on

01.07.1977, and expired on 23.11.1984.

3. The petitioner submits that the said registration was not

renewed, and the petitioner came to know of the fact that the

Registrar of Trademarks have removed the said marks from the

register on 12.04.2010. On 07.10.2010, the petitioner made an

application for restoration of the said trademark on the register and

renewal thereof. According to the petitioner, the respondent has not

entertained this application. Consequently, this petition has been

preferred.

4. The submission of learned counsel for the petitioner is that the

respondent did not follow the prescribed procedure before removing

the said trademark from the register of trademarks. Reference is

made to section 25 of the Trade and Merchandise Marks Act, 1958,

(The Act) which was applicable at the relevant time. Section 25 of this

Act reads as follows:

"25. Duration, renewal and restoration of registration

(1) The registration of a trade mark shall be for a period of seven years, but may be, renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of seven years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar

shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trade mark from the register.

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, within one year from the expiration of the last registration of trade mark, on receipt of an application in the prescribed form, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of seven years from the expiration of the last registration". (Emphasis supplied).

5. Reference is also made to Rules 66 to 69 of the Trade &

Merchandise Marks Rules, 1959 which were applicable at the relevant

time. The said Rules read as follows:

"66. Renewal of Registration.

An application for the renewal of the registration of a trade mark shall be made on form TM - 12 and may be made at any time not more than six months before the expiration of the last registration of the trade mark.

67. Notice before removal of trade mark from register.

At a date not less than one month and not more than two months before the expiration of the last registration of a trade mark, if no application on form TM - 12 for renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor or in the case of a jointly registered trade mark each of the joint registered proprietors and each registered user, if any, in writing on form O - 3 of the approaching expiration at the address of their

respective principal places of business in India as entered in the register or where such registered proprietor or registered user has no principal place of business in India at his address for service in India entered in the register.

68. Advertisement of removal of trade mark from the register.

If at the expiration of the last registration of a trade mark the renewal fee has not been paid the Registrar may remove the trade mark from the register and advertise the fact forthwith in the journal.

69 Registration and renewal of registration.

An application for the restoration of a trade mark to the register and renewal of its registration under sub-section (4) of section 25, shall be made on form TM - 13, within one year from the expiration of the last registration of the trade mark accompanied by the prescribed fee". (Emphasis supplied)

6. Learned counsel for the petitioner submits that under section

25(3) of the aforesaid Act, it was obligatory on the registrar to send

notice in the prescribed manner to the registered proprietor of the date

of expiration and conditions as to payment of fee and otherwise, upon

which a renewal of registration may be obtained. Only after such a

notice had been issued under section 25(3) read with rule 67, as

extracted above, upon the failure of the registered proprietor to seek

renewal of the registered trademark, could the registrar proceed to

remove the mark from the register.

7. Learned counsel for the petitioner further submits that the fact

that the respondent did not issue the mandatory O-3 notice is evident

from the pleadings. Reference is made to paras 1 and 12 of the writ

petition, wherein a specific averment has been made to the effect that

the respondent has not issued the said notice, and that petitioner has

not, in any event, received the same. These averments have not been

specifically denied.

8. On the other hand, in their counter-affidavit, all that is stated by

the respondent is that a large number of regular removal of

trademarks from the register could not have been done without

following the due process as per the provisions of law. Therefore, only

a presumptive statement is made. In fact, in para 7 of the counter-

affidavit, it is the admitted position that in various cases, O-3 notice

had not been issued by the registrar. This being the position, it can

safely be assumed that in the petitioners case O-3 notice had not been

issued as provided for in Rule 67 of the aforesaid rules.

9. Learned counsel for the petitioner places reliance on the decision

of the Madras High Court in A. Abdul Karim Sahib and sons, etc.,

Tiruchirapalli v. The Assistant Registrar of Trade Marks,

Madras, 1983 PTC 55, which has been followed by this Court in

W.P.(C.) No.8950/2006, Kalsi Metal Works Pvt. Ltd. v. Union of

India, decided on 16.05.2007.

10. On the other hand, the submission of learned counsel for the

respondent is that once the registration had lapsed, the same could be

removed from the register even without following the requirement of

section 25(3) and rule 67, as aforesaid. Mr. Datta further submits that

after the expiry of one year from the date when the registration had

been removed from the register, there is no power in the registrar of

trademarks to either restore the registration of the trademark or to

renew the same.

11. It is further argued that on a reading of section 25(3), 25(4) and

the aforesaid rules, it cannot be said that the non issuance of a notice

in form O-3 would automatically extend the period of registration.

12. Mr. Datta submits that the registration of the mark in question

had been obtained in the name of Sh. Ashok Kumar and Sh. Balbir

Singh trading as Malhotra Book Deport. However, in the present

petition, the petitioner has claimed in para 9 that the constitution of

the petitioner has changed. According to the petitioner, a fresh

partnership deed was executed between the new partners, namely Shri

Ashok Kumar Malhotra and Ms. Satish Bala Malhotra. Subsequently, on

the demise of Sh. Ashok Kumar Malhotra, the constitution of the

petitioner was again changed and a fresh partnership deed was

executed between Ms. Satish Bala Malhotra, Ms. Monica Malhotra

Khandhari and Ms. Sonica Malhotra on 30.12.2009. Mr. Datta submits

that it is not clear whether the title in the trademark in question vests

in the petitioner or not.

13. In his rejoinder, learned counsel submits that the petitioner has

given an explanation with regard to the vesting of the trademark in the

letter dated 07.10.2010 placed on record.

14. Having heard learned counsel for the parties and examined the

aforesaid provisions of the Trade and Merchandise Marks Act, 1958

and the Rules framed thereunder, namely, the Trade and Merchandise

Rules, 1959, I am inclined to allow the present petition. Analysis of

Section 25 of the aforesaid Act shows that a trade mark registered

under the said Act may be renewed from time to time for periods of

seven years each on making of an application and payment of the

requisite fee. The application for renewal of the trade mark may be

made, not earlier than six months before the expiration of the last

registration of the trade mark. If such an application is made, the

registration of the trade mark would be renewed, provided the

conditions laid down under the Act and the Rules are satisfied.

However, if no application is made for renewal of the registration of the

trade mark and only two months are left before its expiration, then the

Registrar is obliged to give a notice within one month to the registered

proprietor or if there are more than one, to each of the registered

proprietors, in writing in form O-3, of the approaching expiration of the

registered trade mark. Upon receipt of said notice, the application for

renewal of the registration may be made, in which case, the same

would be renewed. If, however, after the expiration of the last

registration of a trade mark, the renewal fee has not been paid despite

issuance of a notice by the Registrar in form O-3, the Registrar may

remove the trade mark from the register and advertise the fact

forthwith in the journal.

15. An application for restoration of the trade mark to the Registrar

and for renewal of its registration can be made within one year from

the expiration of the last registration of the trade mark, accompanied

by the prescribed fee.

16. The scheme of the Act and the Rules, therefore, is that before

the removal of the mark from the register, the Registrar must give

prior notice in form O-3 to the registered proprietor or to each of the

joint registered proprietors in writing, putting them to notice of the

impending expiry of registration of the mark. The removal of the

registered mark from the register entails civil consequences for the

registered proprietor of the mark. The said removal of the registered

trade mark, in the scheme of things, therefore, cannot be done without

prior notice to the registered proprietor/joint proprietors in the

prescribed form. The mere expiration of the registration by lapse of

time, and the failure of the registered proprietor of the trade mark to

get the same renewed, by itself, does not lead to the conclusion that

the same can be removed from the register by the Registrar of Trade

marks without complying with the mandatory procedure prescribed in

Section 25(3) of the aforesaid Act or read with Rule 67 of the aforesaid

Rules. Removal of the registered mark from the register without

complying with the mandatory requirements of Section 25(3) of the

aforesaid Act read with Rule 67 of the aforesaid Rules would itself be

laconic and illegal.

17. Reliance placed by Mr. Dutta on Section 25(4) and Rule 69 as

aforesaid to contend that the petitioner's application to seek

restoration of the mark on the register and for its renewal could have

been made only within the period of one year from the expiration of

the last registration of the trade mark, and not thereafter, cannot be

accepted because, in this case, the removal of the mark from the

register ab initio was not in terms of Section 25(3) read with Rules 67

and 68 as aforesaid.

18. The scheme contained in Section 25 read with Rules 66 and 67

as aforesaid, is that in case the application for renewal of the

registration is not made before the expiration of the last registration,

the registration of the trade mark would lapse. However that, by itself,

would not lead to removal of the mark from the register. That, by

itself, would not even entitle the Registrar to remove the mark from

the Register. For removing the mark from the register, the procedure

prescribed in Section 25(3) and Rules 67 and 68 should necessarily be

followed. An application to seek renewal of the trade mark can be

made, at the earliest, six months prior to its expiry. However, a

perusal of Section 25(2) with Rule 66 shows that an application for

renewal of the trade mark may be made even after the expiry of the

last registration of the trade mark, but before its removal from the

register. It is not that if the application for renewal of the trade mark is

made after the expiration of the last registration of the trade mark, the

same would not be entertained. The same would be entitled to be

entertained, provided the mark has not been removed from the

register by following the procedure prescribed under Section 25(3)

read with Rules 67 and 68. Rule 68 necessarily has to be read in

conjunction with Rule 67 and cannot be read independent of it. The

procedure prescribed in Rule 67 should first be complied with before

invoking Rule 68.

19. In the present case, since the respondents did not issue the

mandatory notice in form O-3, prior to removing the registered trade

mark in question from the register, the removal of the said trade mark

from the register was illegal. That being the position, the application

to seek its restoration and for renewal of the registered trade mark

under Section 25(4) cannot be said to be barred by limitation on the

ground that it has not been made within the period of one year from

the date of expiration of the last registration of the trade mark.

20. I also agree with the view taken by the Madras High Court in

A.Abdul Karim Sahib (supra). On the issue of restoration of the

trade mark on the register, renewal should not be approached from a

penal point of view. If restoration is just, it is bound be made. The

delay, if any, has not led to registration of the trade mark in question

in favour of any third party. No third party rights have, therefore, been

created. This Court has followed the aforesaid decision of the Madras

High Court in Kalsi Metal Works (supra).

21. For the aforesaid reasons, I allow this writ petition and issue a

mandamus to the respondents to grant restoration and renewal of the

trade mark registration No. 268211B dated 23.11.1970 in Class 16,

upon the petitioner paying the requisite charges and complying with

the requisite formalities.

22. It is made clear that this order shall not prejudice the rights of

any third party who may claim the right of registration in the said trade

mark, considering the fact that the respondents have raised a doubt

about the manner in which the trade mark in question has been

assigned/transferred over the years.

23. The petition stands disposed of in view of the aforesaid terms.

VIPIN SANGHI, J NOVEMBER 29, 2011 sr