Union Of India & Ors. vs Malhotra Book Depot
2013 Latest Caselaw 961 Del

          *IN THE HIGH COURT OF DELHI AT NEW DELHI


%                                     Date of decision: 27th February, 2013
+                               LPA 564/2012
       UNION OF INDIA & ORS.                                  ..... Appellants
                          Through:      Mr. Sachin Datta, CGSC with Ms.
                                        Ritika Jhurani, Adv.
                                     versus
       MALHOTRA BOOK DEPOT                                  ..... Respondent

                          Through:      Mr. Gaurav Pachnanda, Sr. Adv. with
                                        Ms. Sangeeta Goel, Mr. Mohit Goel,
                                        Mr. Sidhant Goel & Mr. Rahul, Advs.
CORAM :-
HON'BLE THE CHIEF JUSTICE
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

RAJIV SAHAI ENDLAW, J

1. This intra-court appeal impugns the judgment dated 29th November,

2011 of the Single Judge of this Court allowing W.P.(C) No.7882/2010

preferred by the respondent by directing the restoration and renewal of the

Trademark of the respondent. Notice of this appeal and of the application for

condonation of delay of 224 days in filing the appeal was issued. Though the

respondent has filed a reply opposing condonation of delay but considering

the fact that the question raised is of interpretation of statutory provisions

and likely to have widespread ramifications, the senior counsel for the

respondent at the time of hearing did not oppose the hearing of the appeal on

merits. We, for the reasons stated in the application for seeking condonation

of delay in filing the appeal, condone the said delay.

2. The writ petition from which this appeal arises was filed by the

respondent pleading:-

(i). that the predecessors of the respondent, (which is stated to be a

partnership firm of Ms. Satish Bala Malhotra, Ms. Monica

Malhotra Kandhari and Ms. Sonica Malhotra Kandhari)

namely Shri Ashok Kumar Malhotra and late Shri Balbir Singh,

trading as M/s. Malhotra Book Depot had applied for and were

granted registration of the Trademark "MBD" in Class 16 for

the goods "publications (printed) and books" vide Trade Mark

Registration dated 23rd November, 1970;

(ii). the said trademark was thereafter duly renewed from 23 rd

November, 1977 to 23rd November, 1984;

(iii). on 1st April, 1992 the constitution of M/s Malhotra Book Depot

was changed and a fresh Partnership Deed was executed

between the new partners i.e. Shri Ashok Kumar Malhotra and

Ms. Satish Bala Malhotra;

(iv). on the demise of Shri Ashok Kumar Malhotra the constitution

of the respondent M/s Malhotra Book Depot was again changed

and a fresh Partnership Deed was executed between Ms. Satish

Bala Malhotra, Ms. Monika Malhotra Kandhari and Ms. Sonica

Malhotra Kandhari on 30th December, 2009;

(v). that in April, 2010 the respondent filed a suit for permanent

injunction restraining infringement of the Trademark MBD and

in connection with the said suit applied for Certificate for Use

in Legal Proceedings - however the application was returned by

the appellant no.3 Registrar of Trade Marks as no

records/details of the said Trademark could be traced in the

database of the Registrar - in the consequent investigation by

the respondent it was realized that the Trademark had not been

renewed after 23rd November, 1984;

(vi). the petitioner on 7th October, 2010 applied for renewal and

restoration of the said Trademark but which application was not

accepted.

The respondent accordingly sought a writ of mandamus for restoration

and renewal of the Trademark. It was inter alia the case of the respondent

that the statutory Notice in Form O-3 under the Trade and Merchandise

Marks Rules, 1959 (the Rules) (which were applicable at the relevant time)

informing the petitioner that the registration of the mark was expiring and

can be renewed was not sent by the Registrar to the respondent and the

Registrar could not thus deny restoration/renewal of the Trademark.

3. The Registrar of Trademarks contested the writ petition aforesaid by

filing a counter affidavit pleading:-

(I). that the renewal of the mark had become due on 23 rd

November, 1984 i.e. 26 years prior to the filing of the writ

petition and the writ petition suffered from delay and laches;

(II). that the factum of removal of the Trademark was notified in the

Trade Mark Journal No.997 dated 16th December, 1990 for non-

payment of renewal fees;

(III). that such removal could not be without following the due

process as per the provisions of law and the respondent was

taking advantage of the fact that the 26 years old records of

dispatch of Notice in Form O-3 would not be available with the

Registrar;

(IV). that on receipt of complaints regarding non-receipt of

Registration Certificates and non-issuance of the Form O-3

Notices, Public Notices dated 24th September, 2010 and 31st

November, 2010 were issued advising the public at large to file

the petitions in the prescribed manner;

(V). that the respondent was also advised to file a petition in this

regard vide letter from the Trade Mark Registry issued on 24th

January, 2011.

Though certain other defences were also taken but the same neither

form part of the judgment of the learned Single Judge nor have been urged

before us and need is thus not felt to dilate on the same.

4. The learned Single Judge allowed the writ petition

observing/finding/holding:-

(a). that the Registrar in its counter affidavit, in response to the

unequivocal plea in the writ petition, that the Notice in Form O-

3 was not received by the respondent, had merely stated that

removal of the mark could not have been done without

following the due process as per the provisions of law and had

thus made only a presumptive statement; further, the Registrar

in para 7 of the counter affidavit had admitted that in various

cases O-3 Notices had not been issued; the learned Single

Judge thus concluded that in the respondent‟s case O-3 Notice

had not been issued as provided for in Rule 67;

(b). that under Section 25 of The Trade and Merchandise Marks

Act, 1958 (the Act) (which was applicable in the year 1984

when the Registration of the mark of the respondent expired),

the application for renewal of the registration could be made

upon receipt of the Notice in Form O-3;

(c). that the Registrar could remove the Trademark from the

Register and advertise the factum of removal in the Journal

only after a Notice in Form O-3 had been issued;

(d). that the removal of the registered Trademark from the Register

entails civil consequences for the registered proprietor of the

mark;

(e). the said removal of the registered Trademark cannot be done

without prior notice to the registered proprietor in the

prescribed form;

(f). mere expiration of the registration by lapse of time and the

failure of the registered proprietor of the Trademark 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 Act r/w Rule 67 of the Rules;

(g). removal of the registered Trademark from the Register without

complying with the mandatory requirements of Section 25(3)

would itself be laconic and illegal;

(h). that the plea of the Registrar that the application for restoration

and renewal of the mark was beyond the time prescribed in

Section 25(4) and Rule 69 could not be accepted because the

removal of the mark from the Register was not in terms of

Section 25(3) r/w Rules 67 & 68;

(i). that under the Act and the Rules, mere lapse of the time does

not result in its removal and for which Notice in Form O-3 is

required to be given;

(j). that in the facts of the present case, since the mandatory Notice

in Form O-3 had not been given prior to the removal of the

mark, the application seeking its restoration and renewal could

not be said to be barred by time.

The learned Single Judge, for holding so, relied on A. Abdul Karim

Sahib and Sons, Tiruchirapalli Vs. The Assistant Registrar of Trade

Marks 1983 PTC 55 (Mad) followed by a Single Judge of this Court in

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

India decided on 16th May, 2007.

5. The counsel for the appellants has argued that removal of a trademark

is an administrative act akin to removal of deadwood and any deficiency in

such removal does not give any right for restoration of the trademark beyond

the time prescribed therefor. Reliance is placed on Administrator,

Municipal Committee, Charkhi Dadri Vs. Ramji Lal Bagla (1995) 5

SCC 272 where Section 44A of the Punjab Town Improvement Act, 1922

was held to be not mandatory in the sense that non-compliance with it leads

to nullification of the acquisition which had already become final. It was

further held that such non-compliance cannot also result in divesting of title

or any obligation to restore the unutilized portion (s) of the acquired land to

its erstwhile owners. The Supreme Court held that since the said Section

44 A, though using the expression „shall‟, did not provide the consequence

of non-compliance with its requirement, it could not be held to be

mandatory. On the basis of the said judgment it is argued by the counsel for

the appellants that no consequences have been provided of non-compliance

with Section 25(3) requiring issuance of the Notice in Form O-3 and thus the

issuance of Notice in Form O-3 cannot be said to be mandatory. It is further

argued that non-issuance of Notice in Form O-3 would not extend the

duration of registration indefinitely. Reliance has also been placed on Order

dated 16th April, 2012 of the Intellectual Property Appellate Board (IPAB) in

OA No.59&60/2011/TM/KOL titled Pernod Ricard India Private Ltd. Vs.

The Controller General of Patents, Designs and Trade Marks holding that

the Act does not make the renewal of the trademark dependent upon the

service of Notice in Form O-3 and does not make the factum of removal of

the mark dependent on the issuance of such notice.

6. On the contrary the senior counsel for the respondent has argued that

if removal of the mark is wrong, its restoration cannot be denied; that Rule

68, while providing for removal of the mark on non-payment of renewal fees

at the expiry of last registration, uses the word „may‟ and not „shall; that it is

for this reason only that the Registrar, inspite of the validity of the mark

having expired in the year 1984 did not remove it till the year 1990; that if

the mark is not removed, its renewal can be applied for at any time; that if

the removal of the mark is wrongful, the limitation prescribed in Section

25(4), of one year for applying for renewal thereof, does not apply. Reliance

is placed on Tetragon Chemie (P) Ltd. Vs. Government of India 2007 (35)

PTC 875 where a Single Judge of the Karnataka High Court held that in the

absence of Notice in Form O-3, the order of removal of the mark on the

ground of non-payment of renewal fees within the prescribed time is bad and

directed renewal. Reliance is also placed on Polson Ltd. Vs. Polson Dairy

Ltd. 56 (1994) DLT 102 in para 28 whereof it was observed that no

restriction is placed on renewal of trademark retrospectively. The senior

counsel for the respondent has also informed that the order in Kalsi Metal

Works Pvt. Ltd. supra was also followed in Order dated 17th July, 2007 in

W.P.(C) No.2610/2007 titled Havana Club Holdings S.A. Vs. Union of

India. It is contended that the Registrar has complied with the said orders

and is thus not entitled to appeal against a similar order in favour of the

respondent.

7. The counsel for the appellant in rejoinder has contended that the

judgment in A. Abdul Karim Sahib and Sons, Tiruchirapalli (supra) relied

upon by the learned Single Judge, is in the context of the 1940 Act which

did not have the equivalent Section 25(4) of the 1958 Act. He has further

contended that the Act as well as the Rules use the word „expiration‟ in

terms of the trademark and such expiration has not been made dependent

upon the issuance of Notice in Form O-3.

8. We have considered the aforesaid rival contentions. In fact we have

condoned the considerable delay in filing this appeal on the plea of the

counsel for the appellant that if the view taken by the learned Single Judge is

to be followed, it would open floodgates of applications for

renewal/registration of trademarks which have lapsed long time ago, in as

much as the Registrar does not have available with him the records of

dispatch of Notices in Form O-3 prior to the removal of the trademarks.

9. Considering the importance of the issue raised and the difference in

the opinion of the learned Single Judge of this Court and the IPAB, we

embark upon interpreting the relevant provisions of the Act and the Rules.

Section 25 of the Act is as under:-

"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"

10. Rules 66 to 70 under Chapter III titled RENEWAL OF

REGISTRATION AND RESTORATION of the Rules are as under:-

―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. Restoration 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.

               70. Notice     and    advertisement     of   renewal    and
               restoration.
               Upon the renewal or restoration and renewal of

registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.‖

11. The reasoning of the IPAB, adopted by the counsel for appellants, is

predicated on renewal, removal and restoration being distinct matters and the

deficiency even if any in removal, not affecting the renewal. The said

reasoning however to us appears to be contrary to the legislative intent. The

legislature and its delegatee, not only in the Act but also in the Rules, have

clubbed "Duration, renewal and restoration of registration" and "Renewal of

Registration and Restoration". The Supreme Court in K.M. Nanavati v.

State of Bombay AIR 1961 SC 112 held that there is ample authority for the

view that one is entitled to have regard to the indicia afforded by the

arrangement of sections and from other indications and Craies on Statute

law, authoring that arrangement of sections and their headings are gradually

winning recognition as a preamble to the enactments which they precede,

limiting or explaining their operation, was quoted with approval. The

Supreme Court further held that headings and arrangement of sections may

be looked at as a better key to construction than a mere preamble. From the

juxtaposition of various Articles of the Constitution, the intention of the

framers of the Constitution was deduced. (Though the aforesaid is in the

minority view but the efficacy thereof is not affected by the majority view.)

Again, in Industrial Finance Corporation of India Ltd. v. The Cannanore

Spinning & Weaving Mills Ltd. (2002) 5 SCC 54 and N.C. Dhoundial v.

Union of India (2004) 2 SCC 579 it was reiterated that section headings and

marginal notes can be relied upon to clear any doubt or ambiguity in the

interpretation of the provision and to discern the legislative intent. Mention

may also be made of Mahendra Kumar v. State of M.P. (1987) 3 SCC 265

where also placement of the various sections was used as an interpretative

tool. Chapter headings were similarly accorded the status of an interpretative

tool and preamble of the sections thereunder, to be resorted to for resolving

doubts, in Tata Power Company Ltd. v. Reliance Energy Ltd. (2009) 16

SCC 659.

12. It is thus legitimate to infer that the legislature and the rule making

authority intended the subjects of duration, renewal and restoration of

registration as interlinked to each other and we are unable to concur with the

reasoning of the IPAB of renewal, removal and restoration being distinct

matters. A holistic reading of the Act and the Rules is clearly indicative of

the legislative intent to the contrary. In the light of the judgments of the

Apex Court aforesaid we are of the view that there is solid and respectable

authority for the rule that one must begin at the beginning and legislative

provisions cannot be read bereft of their placement and context.

13. Even otherwise, on a plain reading of Section 25, the inescapable

conclusion is that though the period of registration was prescribed as seven

years, renewable from time to time on application in the prescribed manner

within the prescribed time [under Sub-Sections (1) & (2)] but the removal of

the mark from the register has been made subject to sending of a notice in

the prescribed manner calling upon the registered proprietor to renew the

mark and permitted only upon the failure of the registered proprietor to do so

[under Sub-Section (3)] and not merely on the failure of the registered

proprietor to apply for renewal within the prescribed time.

14. The Supreme Court, though in the context of a Rent Legislation, in E.

Palanisamy Vs. Palanisamy (2003) 1 SCC 123 reiterated in Sarla Goel v.

Kishan Chand (2009) 7 SCC 658, emphasized the importance of following

the statutory procedure step by step and held an earlier step to be a

precondition for the next step and it being impermissible to straightaway

jump to the last step. It was further held that the last step can come only after

the earlier step has been taken. The Trade Marks Act is an Act for the

benefit of the proprietors of trademarks (refer Thukral Mechanical Works v.

P.M. Diesels Pvt. Ltd. (2009) 2 SCC 768). When the Act itself has

prescribed the procedure for removal, we do not find any justification for

holding the said procedure to be not mandatory or not binding on the

Registrar or to uphold the removal even if such procedure is not followed.

We are here concerned with the legislative interpretation and cannot be

guided by the consequences as argued by the counsel for the appellants,

which may follow as a result of the said interpretation. Where the statute is

clear, the Court has to give effect to the right created and should not restrict

that right merely in order to minimize litigation. It has been held in Coal

India Ltd. v. Saroj Kumar Mishra (2007) 9 SCC 625 that legislative

interpretation cannot be rejected merely for the reason of opening the

floodgates of applications or litigations.

15. The Supreme Court in Sukhnandan Saran Dinesh Kumar v. Union

of India (1982) 2 SCC 150 also held that where the power conferred to do a

certain act is a conditional one, the satisfaction of that condition giving rise

to the occasion to exercise the power is a must. Similarly in Competent

Authority v. Barangore Jute Factory (2005) 13 SCC 477 it was observed

that when each step is a consequence of an earlier step in the sense that all

steps are linked to the initial one, upon the initial step being not in

accordance with law, the foundation goes and the rest of the edifice falls.

16. Section 25(3) providing for sending of a notice prescribes removal of

the trademark only "if" at the expiration of the time prescribed in the notice,

the conditions required therein to be fulfilled have not been complied. The

Supreme Court recently in Head Master, Lawrence School Lovedale v.

Jayanthi Raghu AIR 2012 SC 1571 held that the use of the word „if‟ is

meant to indicate a condition. Thus, Section 25(3) cannot be interpreted as

permitting removal without the condition of sending of notice being

complied with. Earlier also, a Full Bench of the Punjab & Haryana High

Court in Harbans Singh v. State of Punjab AIR 1987 P&H 19 held that the

word „if‟ is always expressive of a condition.

17. The scheme of the Rules regarding renewal of registration and

restoration also suggests so. Rule 66 permits an application for renewal of

registration to be made any time within six months before the expiration of

the last registration. However the removal for non-renewal has not been

made automatic. If the registered proprietor does not make an application for

renewal till two months prior to the expiration of the last registration, the

Registrar is required to notify the registered proprietor of the approaching

expiration (under Rule 67) and is to remove the trademark from the register

only thereafter, as is evident from Rule 68 having been placed after Rule 67.

If removal pursuant to non-renewal was to be de hors the notice for removal,

Rule 68 would have followed Rule 66 and not Rule 67. Though Rule 68

permits removal upon expiration of last registration and non-payment of

renewal fee and does not make the same dependent upon compliance of Rule

67 but to read Rule 68 as permitting removal de hors compliance of Rule 67

would be contrary to Section 25(3) which as aforesaid permits removal only

if at the expiration of the time prescribed in the notice required to be sent

thereunder, the registered proprietor has not applied for renewal. It is a

settled principle of law that rules framed under a statute cannot override the

statute. In Ispat Industries Ltd. v. Commissioner of Customs (2006) 12

SCC 583 it is held that the Rules are subservient to the Act and cannot

deviate from the provisions of the parent Act. It was further held that the

Rules are created to serve the object of the legislation and if there are two

possible interpretations of a Rule, one which sub-serves the object of the

provision in the parent statute ought to be adopted, as an interpretation to the

contrary will make the Rule ultra vires the Act.

18. We are therefore unable to appreciate the view of the IPAB that the

two i.e. removal and renewal have no relation with each other.

19. The Act and the Rules have prescribed the manner in which the

trademark, which is universally identified as intellectual "property", is to be

removed from the register and which removal has the effect of divesting the

registered proprietor of his property rights in the registered trademark. Once

the matter is seen in this light, we fail to see as to how a registered proprietor

can be divested of his property rights in the registered mark in any manner

other than the manner prescribed under the Act and the Rules. The

Constitutional principles applicable to tangible property would apply to

intangible intellectual property also and which bar a person from being

deprived of his property save in the manner prescribed by law. The

Constitution Bench of the Supreme Court recently in K.T. Plantation Pvt.

Ltd. v. State of Karnataka (2011) 9 SCC 1 held that the expression

'Property' in Article 300A which proclaims that no person can be deprived of

his property save by authority of law meaning thereby that a person cannot

be deprived of his property merely by an executive fiat without any specific

legal authority or without the support of law made by a competent

legislature, is confined not to land alone, but includes intangibles like

copyrights and other intellectual property and embraces every possible

interest recognised by law. In Thukral Mechanical Works (supra) also it

was held that registration of a trademark confers a very valuable right and

removal of a mark from the register takes away the valuable right of a

registered proprietor and has civil or evil consequences and therefore can be

done only when the conditions laid down therefor are satisfied. It was yet

further held that as removal takes away somebody‟s right, it deserves strict

construction.

20. The next question which arises for consideration is, what would be the

effect of a removal from the register, without following the prescribed

procedure. Section 25(4) makes the period of one year, prescribed for

restoration of the mark to the register and renewal thereof, begin from the

expiration of the last registration and not from the date of removal. We find

it strange that though the right to restoration accrues on removal but the time

prescribed to apply for restoration is from the expiry of the last registration.

What will happen if removal itself is after one year from the expiry of the

last registration as is the case here. Section 25(4) if literally read, applies

only if the mark has been removed. If it were to be held that under Rule 66

renewal has to be applied for only within six months prior to the expiration

of the mark and not after the expiration, then owing to the mark being not

removed, the registered proprietor would not be entitled to avail of Section

25(4). The period of one year provided under Section 25(4) for applying for

renewal would then become illusory. Section 25(4) can thus be held to be

applicable only where removal is simultaneous to the expiration and not

where removal is not so and is effected much after the date of expiration, as

in the present case. Neither the Act nor Rules prescribe any limitation for

applying for restoration and renewal in a situation where the removal of the

mark from the register is without issuing the notice in Form O-3. In the

absence of any limitation having been prescribed, the only inference is that

such application can be made at any time and in the decision whereon the

Registrar would be entitled to take into consideration the relevant factors

such as whether the same or a similar mark has in the interregnum being

registered by any other person etc.

21. We may in this regard record that though the learned Single Judge has

vide impugned judgment directed the Registry to restore and register the

mark without prejudice to the rights of any third parties but the senior

counsel for the respondent has fairly suggested that the said direction be

modified to a direction to the Registrar to consider renewal of the mark after

satisfying itself that the respondent is the registered proprietor of the mark

which has expired and/or is the successor of the said proprietor and that

there is no other impediment viz. of registration in the interregnum by any

other person of the same or similar mark.

22. The learned Single Judge on the basis of the pleadings in the writ

petition has concluded that in the present case no notice in Form O-3 has

been given. We see no reason, in exercise of appellate jurisdiction and in the

absence of anything to the contrary being shown, to interfere with the said

conclusion of the learned Single Judge in exercise of discretionary powers

under Article 226 of the Constitution of India.

23. Further, once it is held that for the Registrar to invoke the bar of

limitation of one year for applying for renewal, the notice under Form O-3 is

mandatory, the Registrar cannot be permitted to invoke the presumption of

the removal having been done in the manner prescribed in law. The learned

Single Judge is right in observing that the appellants by inserting the public

notices have admitted to default in issuing the notice in Form O-3. It is

significant to note that the respondent had applied for restoration and

renewal within one year therefrom. One of the two judges of the Supreme

Court, in Delhi Airtech Services Pvt. Ltd. v. State of U.P. (2011) 9 SCC 354

after noticing the distinction between mandatory and directory provisions

held that where a statute imposes a public duty and proceeds to lay down the

manner in which the duty shall be performed, the injustice or inconvenience

(to the public authority) resulting from a rigid adherence to the statutory

prescriptions may not be a relevant factor in holding such prescription to be

only directory. Though the said matter is referred to a larger Bench, but that

does not affect the efficacy of the aforesaid. Earlier, a five Judge Bench in

Mysore State Electricity Board Vs. Bangalore Woolen, Cotton and Silk

Mills Ltd. AIR 1963 SC 1128 also, faced with an argument that if a question

between the Electricity Board and the consumer were to be referred

to arbitration, then there may be thousands of arbitration, which the

legislature could not have contemplated, held that it was an argument based

on inconvenience and that inconvenience is not a decisive factor in

interpreting a statute. We are of the opinion that Section 25 having imposed

a duty on the Registrar to effect removal of the mark only after sending the

notice and upon failure of the registered proprietor to comply therewith, the

argument, and which also prevailed with the IPAB, that Registrar should not

be held bound by such duty merely for the reason of the proof of

dispatch/service of such notices being not available, is fallacious.

24. Though we have held that Section 25(4) prescribing the time of one

year from the expiration of the last registration for restoration is applicable

only where removal is in compliance of Section 25(3) and Rule 67 but

Section 26 which is as under:

"26. Effect of removal from register for failure to pay fee for renewal.--Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either--

(a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.‖

appears to suggest that the said period of one year in Section 25(4) is also to

be read as commencing from the date of removal and not from the date of

expiration of the last registration, where removal is not immediately after the

expiration of the last registration. Else, there would be no logic/sense in in

Section 26 providing for deeming the mark on the register for the purposes

of any application for registration of the same or similar mark. The only

answer, according to us, can be that the registered proprietor of the

trademark which has been removed, during the said one year has a right of

seeking restoration and renewal thereof. If the legislative intent was to vest a

right of renewal only for a period of one year from the expiration of the last

registration, the operation of Section 26 would also have been for one year

from the date of expiration of the last registration of the trademark and not

one year from the date of removal.

25. Section 2(r) of the 1958 Act defines the "registered trademark" as a

trademark which is actually on the register and not as a trademark,

registration of which is valid/has been renewed. Similarly Section 29

provides that a registered trademark is infringed when a person not being the

registered proprietor uses in the course of the trade, a mark which is

identical with or deceptively similar to the trademark which is registered.

Since as per Section 2(r) a registered trademark is a trademark which is

actually on the register, under Section 29, registered trademark would be

infringed even though its registration may have expired, so long as it has not

been removed from the register.

26. Section 26 supra would become otiose/redundant if it were to be held

that the rights of a registered proprietor to restoration and renewal of mark

extinguish on the expiry of one year from the expiration of the last

registration and irrespective of whether the trademark is actually removed

from the register immediately on such expiration or after considerable time.

If the registered proprietor whose trademark has expired, irrespective of

whether the same had been removed or not from the register were to be left

with no right therein, there would not have been any need in Section 26 to

preserve such rights for a period of one year from the removal.

27. In the light of the view which we have taken, that removal without

following the mandatory procedure prescribed therefor is bad, the judgement

of the Supreme Court in Administrator, Municipal Committee, Charkhi

Dadri (supra) relied upon by the appellants is of no application. Moreover,

the Supreme Court in that case held that once acquisition had become final

and the title to the land stood divested, the subsequent non-compliance could

not undo what already stood done. However, in the present case, we are

concerned with different statutory provisions whereunder according to us

removal had not attained finality owing to the procedure prescribed therefor

having not been followed.

28. The appeal therefore fails and is dismissed save that the direction

given in the impugned judgment to the Registrar to restore and renew the

mark is modified to a direction to the Registrar to restore/renew the mark

after satisfying that the respondent is the registered proprietor/successor of

the registered proprietor of the registered trademark which has expired and

that in the interregnum same or similar marks have not been registered.

No costs.

RAJIV SAHAI ENDLAW, J

CHIEF JUSTICE FEBRUARY 27, 2013/pp