Madras High Court
Ashok Kumar Sethi vs The Registrar Of Trade Marks on 12 October, 2023
CMA(TM) No.6 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 12.10.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(TM) No.6 of 2023
Ashok Kumar Sethi,
Proprietor,
M/s.Abhinav Export Corporation
Residing at C-2, Nos.1 & 3,
Swarup Heritage, II Street,
Kasthuri Estate,
Poes Garden,
Chennai – 600 086. ... Appellant
Vs.
The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate, SIDCO RMD,
Godown Area, G.S.T. Road, Guindy,
Chennai – 600 032. ... Respondent
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
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CMA(TM) No.6 of 2023
request filed by the appellant in respect of Trade Mark Application
No.728906 dated 02.09.1996 in Class 03.
For Appellant : Mrs.Gladys Daniel
for M/s. Daniel & Gladys
For Respondent : Mr.C. Samivel
Senior Panel Counsel
JUDGMENT
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
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CMA(TM) No.6 of 2023
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
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CMA(TM) No.6 of 2023
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
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CMA(TM) No.6 of 2023
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
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CMA(TM) No.6 of 2023
counsel states that the records of the Trade Marks Registry do not
contain evidence of the communication thereof to the appellant.
5. The facts of this case exemplify the trials and tribulations
of applicants for registration of trade marks when registration is
made after considerable delay. In this case, the application for
registration was filed on 02.09.1996 and the opposition
proceedings were decided on 31.01.2013. Thereafter, the
registration certificate was issued on 31.05.2017, which is more
than 4 years after the opposition was rejected. The issuance of
such registration certificate does not appear to have been
communicated to the appellant. Since the registration is with effect
from the date of application and such registration is valid for a
term of 10 years subject to renewal, by the time the above
registration certificate was issued, the first two terms of 10 years
each had expired. Nonetheless, until the entry is made on the
Register of Trade Marks, an application for renewal cannot be
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CMA(TM) No.6 of 2023
filed. Whether the Trade Marks Act and the rules framed
thereunder provide for such piquant situation is examined next.
6. Rules 57 & 58 of the Trade Marks Rules deal with renewal
of registration. The said rules are set out below:-
“57. Renewal of registration. — (1) An application for
the renewal of the registration of a Trade Mark shall be
made in Form TM-R along with the fee as prescribed in
the First Schedule and may be made at any time not more
than one year before the expiration of the last registration
of the Trade Mark.
(2) A request for renewal of registration of the Trade
Mark filed within prescribed time shall be allowed unless
the Trade Mark has been removed or cancelled or is
otherwise not renewable under any of the provisions of the
Act and rules or by any order of the competent Court or
the Registrar.
58. Notice before removal of Trade Mark from
register.—(1) In case no application for renewal of the
registration in the prescribed form together with the
specified fee has been received, the Registrar shall send,
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CMA(TM) No.6 of 2023
not more than six months before the expiration of
registration of the Trade Mark, a notice in Form RG-
3 at the address of service informing the registered
proprietor of the approaching date of expiration and
the conditions, if any, subject to which the renewal of the
registration may be obtained. (emphasis added)
(2) Where, in the case of a Trade Mark the
registration of which (by reference to the date of
application for registration) becomes due for renewal, the
Trade Mark is registered at any time within six months
before the date on which renewal is due, the registration
may be renewed by the payment of the renewal fee within
six months after the actual date of registration and where
the renewal fee is not paid within that period, the
Registrar shall subject to rule 60, remove the Trade Mark
from the register.
(3) Where, in the case of a Trade Mark the
registration of which (by reference to the date of
application for registration) becomes due for renewal, the
Trade Mark is registered after the date of renewal,
the registration may be renewed by the payment of
the renewal fee within six months of the actual date
of registration and where the renewal fee is not paid
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CMA(TM) No.6 of 2023
within that period the Registrar shall, subject to rule 60,
remove the Trade Mark from the register.(emphasis added)
(4) The renewal of registration of a collective Trade
Mark or a certification Trade Mark shall be in Form TM-R
along with the prescribed fee as specified in the First
Schedule.”
7. As per sub-rule 1 of Rule 57, an application for renewal of
registration of a Trade Mark is required to be made at any time not
more than one year before the expiration of the last registration of
the Trade Mark. The Trade Marks Rules envisage a situation
where the Trade Mark is registered after the expiry of the date of
renewal. The said situation is dealt with in sub-rule 3 of Rule 58.
Sub-rule 3 provides that the registration may be renewed by the
payment of renewal fee within 6 months of the actual date of
registration if the Trade Mark is registered after the date of
renewal. If the appellant had been informed of the renewal or if
the registration certificate dated 31.05.2017 had been
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CMA(TM) No.6 of 2023
communicated to the appellant, sub-rule 3 of Rule 58 would have
been attracted and the appellant would have been required to seek
renewal within 6 months from 31.05.2017. As discussed earlier,
learned counsel for the Trade Marks Registry submits that the
records of the Registry do not contain evidence that the certificate
was communicated to the appellant. In these circumstances, the
appellant was justified in applying for renewal on 18.04.2018.
8. Learned counsel for the appellant asserted that the said
application was enclosed with fees for renewal for 2 blocks of 10
years each. The receipt indicates that a sum of Rs.18,000/- was
remitted and this represents the renewal fee for 2 blocks of 10
years each. The Registrar of Trade Marks, however, renewed the
registration for only one block of 10 years from 02.09.2006 to
02.09.2016 under certificate of renewal dated 22.04.2018. If the
registration had been renewed for two terms at that juncture, the
present imbroglio would have been averted. A few months later, a
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CMA(TM) No.6 of 2023
notice in Form RG-3 dated 02.07.2018 appears to have been
uploaded. As per sub-rule 1 of Rule 58, such notice was required
to be sent not more than 6 months before the expiration of the
registration of the Trade Mark, whereas the notice was issued on
02.07.2018 (i.e. about 22 months after the expiry of the term of last
registration) indicating the date of expiry as 02.09.2016.
Undoubtedly, this notice was not in accordance with sub-rule 1 of
Rule 58. Even otherwise, it flies in the face of reason and common
sense to expect a party to renew a registration which expired on
02.09.2016 pursuant to notice issued on 02.07.2018.
9. For all these reasons, the impugned order is unsustainable
and is hereby set aside. As a corollary, the Registrar of Trade
Marks is directed to receive the requisite renewal fees, if
previously refunded to the appellant, and renew the registration of
Trade Mark No.728906 for a period of 10 years from 02.09.2016 to
02.09.2026. Such renewal of registration shall, however, be subject
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CMA(TM) No.6 of 2023
to the outcome of (T)CMA(TM) No.30 of 2023
(OA/36/2013/TM/CH).
10. CMA(TM) No.6 of 2023 is allowed on the above terms
without any order as to costs.
12.10.2023
Index: Yes/No
Speaking Order/Non-speaking Order
Internet: Yes/No
Neutral Citation: Yes/No
Sni
To
The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Rights Building,
Industrial Estate, SIDCO RMD,
Godown Area, G.S.T. Road, Guindy,
Chennai – 600 032.
SENTHILKUMAR RAMAMOORTHY,J.
https://www.mhc.tn.gov.in/judis
CMA(TM) No.6 of 2023
Sni
CMA(TM) No.6 of 2023
12.10.2023
https://www.mhc.tn.gov.in/judis
