Asianet Star Communications Pvt Ltd vs Registrar Of Trademarks & Anr

Prathiba M. Singh, J

CM APPL. 46494/2019 (exemption)

Allowed, subject to all just exceptions. Application is disposed of.

W.P.(C) 11284/2019 & CM APPL. 46493/2019 (interim direction)

This writ petition has been filed by the Petitioner bringing to the notice of the Court that the trademark of the Petitioner was deemed to have been abandoned for non-filing of renewal fee and seeking permission to renew the same. The stand of the Petitioner is that the O-3 notice for renewal was not issued by the Registrar of Trade Marks. As per the orders of the Division Bench of this Court, as also the Bombay 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] respectively, if O-3 notices are not issued, the marks cannot be treated to be abandoned. The stand of the Petitioner is that when it checked the website of the Trademark Registry around 20th June, 2019, no O-3 notice in respect of the Petitioner's trademark No.586576 was uploaded on the website. Thereafter, the Petitioner applied for renewal, along with the past fee/penalty. Surprisingly, on 30th July, 2019, the Petitioner found the O-3 notice, which was uploaded with the date of 5th September, 2016. The contention of ld. counsel for the Petitioner is that the fact that this O-3 notice is backdated is evident from the notice which is titled as "Form RG-3". This form came into effect only on 6th March 2017, when the new Trade Mark Rules were notified. Thus, "Form RG-3" did not exist as of 2016. Thus, according to the Petitioner, the O-3 notice was never issued and the mark ought not to be treated as abandoned.

According to the Registrar of Trade Marks, O-3 notices were sent on 12 th September, 2016 to the Petitioner i.e., Asianet Star Communications Pvt. Ltd. at C-20, Qutab Institutional Area, New Delhi -110016. The bar code issued by the post office is relied upon by the Registrar of Trade Marks, which has been handed across to the Court.

This Court, on an earlier occasion, considered a similar matter in M/s. B.E.C. Industries v. Union of India, [WP(C) No.10040/2019, decided on 17 th September, 2019] wherein certain directions were issued. An enquiry was also directed to be conducted in the matter as to how the "Form RG-3" was uploaded instead of the O-3 notice. Ld. counsel appearing for the Registrar of Trade Marks submits that some part of the enquiry report was, in fact, forwarded to him, however, he does not have complete instructions in the matter.

This petition, as also W.P. (C) 10040/2019, raise serious issues in respect of uploading of O-3 notices in a backdated manner. The same being backdated is, prima facie, evident from the use of the title "Form RG-3" for notices allegedly issued in 2016, when the said form had, in fact, not come into effect. The Registrar of Trade Marks ought to explain as to how such a glaring inconsistency can exist on its own website. Explanation also ought to be given as to the manner of uploading O-3 notices and how O-3 notices are being uploaded as RG-3 notices.

It is, accordingly, directed that a senior official from the Registrar of Trade Marks shall remain present in Court on the next date along with the relevant records of trademark registration No.586576. In the meantime, the following interim directions are passed:

i. The Petitioner is permitted to approach the ld. Registrar of Trade Marks, Delhi and deposit the renewal fee physically if not through the online method.

ii. The registration of the Petitioner's trademark shall not be treated as abandoned till the next date and the Petitioner shall continue to enjoy all rights as the registered proprietor of the mark.

iii. The Examiner of Trade Marks - Ms. Shikha Dewan, who has signed the form RG-3 notice, which is purportedly dated 12th September, 2016, shall file a personal affidavit as to when this particular form was uploaded and as to in what manner it was communicated to the Applicant. She shall also file relevant documents to support the said uploading. Ms. Shikha Dewan is directed to be present in Court on the next date.

List on 31st October, 2019.