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Judgment
,,,
Prathiba M. Singh, J",,,
W. P. (C) 2325/2010,,,
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, “TMRâ€) website showed the trade mark as ‘abandoned’. Hence, the",,,
writ petition.,,,
W. P. (C) 10040/2019,,,
The order dated 17th September, 2019 records the factual background to this petition as follows:",,,
“2. The Petitioner is the owner and registered proprietor of trademark bearing No. 278366 in class 9 for the mark “B.E.C. (logo)â€.,,,
The said mark was applied for in the year 1972 and was registered in 1978. The same was last renewed for a period of 10 years from 16th,,,
February, 2007. The next renewal had to be done prior to 16th February, 2017. The Petitioner’s case is that it did not receive any",,,
notice for renewal and accordingly, it could also not apply for renewal as the counsel dealing with the matter had passed away and there",,,
was some miscommunication.,,,
Sometime in August, 2019, the Petitioner, while sending its registration to a proposed joint venture partner realised that the same was not",,,
renewed. It therefore approached a trademark attorney and tried to deposit the renewal fee, however, it noticed an online notice uploaded",,,
as O-3 notice on the trademark registry’s website. A screenshot of the same has been placed on page 34 of the petition. Ld. counsel,,,
submits that when the said O-3 notice was opened for viewing, the same was shown as form RG-3, purportedly dated 2nd November, 2016.",,,
The submission of Mr. Neeraj Grover, ld. counsel is that form RG-3 was, in fact, a new form which was introduced only with the",,,
notification of the trademarks rules in 2017, with effect from 6th March, 2017. Thus, he submits that it is surprising that the notice dated",,,
2nd November, 2016 is called form RG-3. According to him, it is clear that the form O-3 notice was never dispatched and accordingly, the",,,
Petitioner ought to be permitted to renew his trademark.,,,
Ld. Counsel appearing on behalf of the Respondent submits that she has been served with an advance copy and seeks time for taking,,,
instructions.,,,
A perusal of the website screenshots shows that the O-3 notice is purportedly dated 2nd November, 2016. There can be no dispute that",,,
the form RG-3 notice only came into effect from 6th March, 2017. The O-3 notice, therefore, could not have been an RG-3 notice if the",,,
notice was actually issued on 2nd November, 2016. The fact that the form is wrongly uploaded with the date of 2nd November, 2016 is also",,,
evident from the fee being charged i.e., Rs.10,000/-, which is the newly notified annual fee, unlike the annual fee in form O-3 which was",,,
Rs.5,000/-. These facts clearly indicate that there is something amiss in the uploading of these forms and the same is prima facie not as per",,,
procedure and the Rules.â€,,,
Thereafter, ld. counsel for the Registrar of Trade Marks has taken instructions in the matter.",,,
W. P. (C) 11284/2019,,,
The facts of this petition are recorded in order dated 22nd October, 2019 as follows:",,,
“2. 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-3â€. 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 12th 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.â€",,,
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),,,
All the above three petitions raised issues in respect of the renewal of the respective registered trademarks and the fact that renewal notices,,,
(Formâ€" 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, only an O-3 notice could have been uploaded",,,
and thus the uploading of a RG-3 notice dated 2nd November, 2016 showed that there was something amiss.",,,
In the background of all these writ petitions, the various problems in the processing of Trade Mark applications were considered and on 17th",,,
September, 2019, the following order was passed in W.P.(C) 110040/2019:",,,
“7. Trademark rights are extremely valuable rights. Without issuing form O-3 notices, the said marks cannot be treated as abandoned",,,
and renewal fee would have to be permitted to be paid by the Petitioner. As per the Division Bench Judgment of the Bombay High Court in,,,
Cipla Limited v. Registrar of Trade Marks & Anr. [W.P. No. 1669 of 2012, decided on 23rd September, 2013] and the Delhi High Court in",,,
Malhotra Book Depot v. Union of India & Ors, 2012 (49) PTC 354 (Del.), the dispatch of a form O-3 notice is compulsory and mandatory",,,
prior to abandoning a trademark for non-renewal. Accordingly, the Petitioner ought to be permitted to pay the renewal fee which it is not",,,
being able to do as is evident from page 33 of the writ petition.,,,
Under these circumstances, 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 2nd November,",,,
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.,,,
The ld. Registrar of Trade Marks, Delhi shall file an affidavit as to the manner in which Renewal notices are being uploaded and",,,
communicated to clients. Further, the affidavit will deal with the contentions raised int he writ petition. The Controller General shall conduct",,,
an enquiry into the manner in which an O-3 notice was purportedly uploaded on 2nd November, 2016 whereas the actual form which is",,,
uploaded came into effect only from 6th November, 2017. The enquiry shall be conducted by a senior official from the office of the",,,
Controller of Patents, Designs and Trade Marks. The Enquiry Report shall be placed on record before the next date of hearing.â€",,,
The Examiner of Trade Marks appeared and explained that though the Petitioner had filed a TM Form 34 for change of his address on 24th April,",,,
2007, since the same was allowed only on 28th September, 2017, the 0-3 notice dated 5th September, 2016 was dispatched to the earlier address",,,
available with the Respondent in 2016. Insofar as the form O-3 notice appearing as a form RG-3 notice is concerned, the Examiner submitted that",,,
while she did not have any personal knowledge as to why the O-3 notice is being reflected as an RG-3 notice, discussions with the IT development",,,
team of NIC has revealed that due to technical errors, some of the 0-3 notices issued by the office even before 6th March, 2017 were shown in the",,,
form of an RG-3 notice as per the new Trade Marks Ru1es, 2017. It was, however, clarified that the physical copies sent to the concerned",,,
proprietor's registered offices remained in the proper format.,,,
In view of the technical issues which were highlighted by parties, a need was felt that there ought to be further streamlining of the process of trade",,,
mark applications, and accordingly, this Court had further passed order dated 31st October, 2019 in WP(C) 11284/2019, as under: -",,,
In order to obviate the recurrence of such situations in the future, which have clearly become endemic in the Trade Mark Registry, a",,,
proper procedure is required to be established for the processing of trade mark applications and registrations. Accordingly, the Registrar",,,
of Trade Marks shall place on record an affidavit of Mr. Hoshiar Singh, the Head of the Trade Marks Registry Office, Delhi, detailing the",,,
following aspects:,,,
i) the current procedure for processing of trade mark applications, including the various steps starting from filing, acceptance of fee,",,,
allocation of application number, examination and generation of examination report, acceptance of responses, hearings held, if any, orders",,,
passed on the said files, grant of trade mark registration certificates, change of address, change of name, processing of licences and",,,
assignments, renewal notices, etc. and whether they are dealt with by one officer or by different departments, even if they relate to same",,,
application. The same may be explained by means of a flow chart;,,,
ii) the manner and procedure for uploading of documents which is currently being followed at each and every stage by the Trade Marks,,,
Registry;,,,
iii) whether it is considered efficient to allocate a particular trade mark application to a specific officer who would then process the various,,,
forms filed in respect of that application so that the familiarity of the officer with the file would enable efficient processing of the same;,,,
iv) insofar as post-registration formalities, such as renewals, assignments, etc. are concerned, whether the same should be dealt with by a",,,
separate department and if so whether post registration formalities of specific registered trade marks ought to be handled by a single,,,
officer.,,,
The above be placed in the form of an affidavit so that this Court may consider passing appropriate directions for streamlining of the,,,
processing of trade mark applications on the next date of hearing.â€,,,
Subsequently, this Court has also passed various directions on 5th December, 2019 and 13th January, 2020.",,,
The entire purpose of passing directions in these petitions has been to ensure that the processing of Trade Mark applications is properly,,,
streamlined and multiple officers do not handle the same Trade Mark application leading to lack of a coordinated approach. The TMR had also,,,
deputed Mr. Pawan Kumar Pandey, Deputy Registrar, who has regularly appeared before the Court. Various stakeholders were also consulted after",,,
the issuance of public notices.,,,
In respect of the directions issued on 31st October, 2019, the TMR has filed affidavits explaining the process and capturing the various steps taken",,,
for implementing a more streamlined process.,,,
Sr. No.,Suggestion Received,Office Responses,Directions
1,"It is suggested that a nodal
officers for solving the
issued in time bound
manner be nominated at
each branches of TM
registry. It is further
suggested that any
commendation send to
nodal officers be confirmed
by receipt of the same.","Suggestions accepted and
an office order dated
03/01/2020 issued in this
regard.",Accepted.
2,"A n issued relating to
streamline of disposal of
TM-M is also rose.","It has been informed to the
stakeholders that processing
of TM-M is already
streamlined and that TM-M
is taken up for disposal by
the same officer who is
dealing with the application
at particular stage. The
system has been designed
as such that form filed in
the application is moved
with the application and the
officer dealing with
application shall require to
dispose the pending form
also to proceed further in
the application. However,
again a direction to show-
cause hearing officers has
also been issued to take up
the amendment request for
disposal at the time of
hearing vide office order
dated 03/01/2020.","In view of the response of
the Trade Marks Registry,
it is directed that all forms
filed till the stage of
registration are processed
by one officer. At the time
of show-cause hearing, any
pending TM-M shall also be
disposed of before the mark
proceeds for advertisement.
3,"An issue raised in regard to
hearing u/r 45(2) where
service of the
counterstatement has not
been served properly.","It has been informed to the
applicant that notices have
been issued in only those
matters where the office is
having dispatch details of
counterstatement. However
if any issue exists in
particular matter, same may
raised to the concerned
hearing officer in the
matter.",No directions required.
4,"A request is made to
provide additional
opportunity to upload
document at hearing stage
which is limited one time at
present.","It is informed to the stake-
holders that opportunity to
upload reply to the applicant
has been provided
stagewise. There is space
constraint exists as present,
however, due care will be
given at the time of
implementation of the new
eTMRsystem.","Let provision for additional
uploading be made in
accordance with the Rules
in the new eTMR system.
5,"A suggestion is made to put
application related to similar
trademark before same
officers.","It is informed that presently
office is clubbing the matter
related to same agent for
particular period for
scheduling of hearing.
Fixation of similar
trademark related to same
application before same
office required further
discussion in regard to
limitation and challenges.","There is no requirement for
clubbing applications of
similar trade-marks as
issues as to which marks
are similar will also arise.
That would put enormous
burden on the Trade Marks
Registry
6,"Applicant/opponent email id
should be visible to each
other.","R e q u e s t Accepted.
Necessary change will be
effected soon.","Change be effected on or
before 30th April 2020 so
that the email addresses of
t h e opposing parties is
available to all concerned.
7,"A suggestion is made to
provide opportunity to
update email ID in
application filed before 6th
march, 2017.","A Public Notice dated
03/12/2019 was issued to
provide said opportunities.","Opportunity to update new
e-mail ID be provided on or
before 30th April 2020.
9,"A suggestion made to
upload opposition / show-
cause cause list in time. It is
also requested to send
hearing notices in at least
30 days advance.","R e q u e s t accepted.
Necessary effort will be
made to upload cause list at
least a month before w.e.f
from 01/04/2020. As far as
dispatch of notices in
concerned, it is issued 30
days in advance only.
However, if any delay
exists in this regard in some
matter, necessary steps will
be taken.","Cause list be uploaded one
month prior to the hearing
and notices be dispatched
30 days in advance. The
cause list shall contain pre-
and post- lunch slots for
hearing. Email service of
notice would be adequate
service.
10,"Additional space may be
provided for uploading
documents","Currently there is space
contract in present TM
System. However, this
request will be considered
after the implementation of
new eTMR.","Let allocation of additional
space be considered with
the implementation of the
new e-TMR system.
11,"Multi-class application
should be advertised in
respective classes against
the present practice of class
99.","Suggestions accepted and
will be done by making
changes in the system.","I n the case of multiclass
applications, the trade mark
be advertised in each of the
classes so that those
persons who wish to oppose
the mark in a particular
class do not miss out on
filing of oppositions and
burden is not increased on
all trade mark owners to
search the TMJ for multi
class category to identify
identical/similar
applications.
12,"Daily order sheet be
arranged to uploaded in the
application details of e-
register","It was informed that this is
already under consideration.
Presently not possible due
to limitation of present TM
system. However will be
done after the
implementation of eTMR.","Uploading of orders be
implemented on or before
15th April 2020. If the
uploading is not possible due
to server space constraints
or any other reason, until
the implementation of the e-
TMR system, the orde
shall be dispatched to the
respective parties by email
within a week after it is
passed.
13,"Display board of hearing
matters, Scheduling of
hearing be done slotwise to
avoid the long waiting for
hearing","Accepted, and will be
implemented w.e.f.
01/04/2019.",-- Same as 9 above--
14,"Multi class search facility
be provided.","T h e present system is
having its limitation and this
sort of changes may not be
possible in the same.
However, it is further
informed that this
requirement will be
available in new eTMR.","L e t the same be
implemented in the new e-
TMR system.
15,"Display of Hearing Board
related to show cause
hearing in Advance.","S how-C a use hearing
scheduled in bulk and the
same is divided among the
present authorised hearing
officer for the purpose. In
case hearing officer take
leave then with a view to
avoid inconvenience to the
parties, hearing officer wise
board decided by system on
the same day. However,
Slotting of the matter in to
two parts i.e. pre-lunch and
post lunch is under
consolidation.",--Same as 9 above--
16,"Processing of Registered
user request on TM-U
Partial Partial Assignment.","At present there is no such
,module exist for processing
of such request, however
same will be come in
existence with
implementation of eTMR.","L e t the same be
implemented in the new e-
TMR system.
17,FAQ be updated,"The office is in process to
update the same and
updated version will
uploaded at official website
shortly.",No directions required.
18,"Request for dispatch of
Physical copy of
Registration certificate.","I n view of the making
office environment friendly,
we stared reducing the use
of papers. A policy decision
is taken to shift on issuance
of digital registration
certificate. Applicant can
always print a physical
copy.","Let the digital registration
certificates be uploaded
within three months from
the date when the period
for filing the notice of
opposition expires, if no
opposition is filed.
19,"Some suggestion received
in regard to processing of
TM-P and branch by single
officer.","I t may be noted that
processing of post
registration amendment
required is done as such, all
request related to single
application processed by the
same officer. The office is
committed to dilute the
pendency in this area and
dispose such request within
three month from the date
of filing. It is further
clarified that hearing, if
required, is provided at the
branch under which
jurisdiction the original
application filed. However
normal processing is done
by which officers or at
which location should not be
area of concern to the
applicant.","W.e.f. 30th April 2020, all
forms filed post-registration
i.e., TM-P’s ought to be
processed by the same
officer. O-3 and RG-3
notices ought not to be
issued till the pending TM-
P’s are disposed of, as
stated in the affidavit of the
Deputy Registrar dated 6th
March, 2020, the relevant
portion of which reads as
under: - “I state that to
avoid discrepancy in
issuance of O-3/ RG-3
notices during the pendency
of TMP’s, the Registr
will implement a system
wherein O3/RG-3 notices
will not be issued unless the
pending TM-P’s are
disposed of by the officer
concerned. The same will
be implemented in the new
e-TMR system which is
expected to be implemented
by the end of this year.â€
20,"Early publication of the
Annual report.","I t is inform to the
stakeholders that Annual
Report is published after the
approval of the competent
authority and placement in
the parliament only.
However, possible measure
may be taken to reduce
delay in future.",No directions required.
21,"GI should not be registered
as TM.","There is Statutory provision
for restriction of registration
of TM of registered GI.
However, if some
discrepancy noted
specifically, may be brought
is the knowledge of the
office.",No directions required.
22,"Request made to avoid
discrepancy in regard to
filing of letter /
correspondence.","I t was inform to the
stakeholder that specific
nomenclature is given for
s pe e dy allotment or
processing of application
such as reply to
examination report, reply to
formality check fail, etc.
Everyone should take
proper care to file the
document properly.
However, in some specific
cases, office may be
consulted, if required.",No directions required.