0

Bombay HC quashes the communication that denied renewal of trademark application on the basis of delay

Case title:- Motwane Private Ltd. Versus The Registrar of Trade Marks and Union of India

Case No:-WRIT PETITION (L) NO. 30537 OF 2023

Decided on:-16-02-2024.

Quorum:- G. S. KULKARNI & FIRDOSH P. POONIWALLA, JJ.

Facts of the case:-

The petitioner claims that it registered the trade mark “MOTWANE” (also known as “the said mark”) under the numbers 312470, 312472, and 312473. Petitioner renewed till February 17, 1983. The petitioner claims to have been using the aforementioned marks continuously for its company since 1976. The petitioner argues that these marks’ registration needed to be renewed after February 17, 1983. On the Registrar of Trade Marks’ official website, the marks, however, remained displayed as the petitioner’s registered marks in the trade mark register. It is alleged that the petitioner carried out a standard search at some point in August 2023 upon discovering that the petitioner’s registered trademarks, including the one in question, had not been renewed since 1983, of the status of such trademarks. It is further argued that the petitioner did not receive from respondent no. 1 a notice under sub-section (3) of Section 25 of the Trade Marks Act, 1999 read with Rule 58 of the Trade Mark Rules, 2017 regarding the removal of these marks as a result of the non-renewal of the registration of the said marks. In these circumstances, the petitioner, through its advocate, filed separate applications with the respondent no. 1 office under the Right to Information Act, among other things, requesting information about the issuing of any removal notice by the first respondent. The office of respondent no. 1 responded to these RTI applications, among other things by saying that with regard to any of the registrations of the subject marks, respondent no. 1 did not issue, send, or deliver a removal notice. In these due to the lack of notice under Section 25(3) of the Trade Marks Act and the fact that the marks have remained on the register of trade marks, the petitioner argues that it is implicitly recognized that the petitioner has the legal right to request the renewal of the trade marks by submitting the necessary renewal applications. Based on these premises, the petitioner attempted, via its counsel, to request for the renewal of the registration of these three symbols utilizing the online process, it was discovered that the Trade Marks Registry’s main website, which is where all applications are typically filed, did not offer a renewal option for the online module. The petitioner claimed that this was because the trade marks were not renewed on time. This was corroborated by the system’s contested rejection, which said that the petitioner’s “Application cannot be renewed (delay of more than one year)”. The petitioner has come before this court in some Circumstances.

Legal Provisions

Article 226 (1) clearly states that every High Court shall have the powers throughout the territories in relation to which it exercised jurisdiction to issue writ or orders to any person or authority.

Appellant Contentions

Mr. Kamod, the petitioner’s knowledgeable attorney, has endorsed the aforementioned Praying on the grounds that the petitioner is legally entitled to request the renewal of The registration of the disputed marks, along with the comments and explanations provided by The electronic system, would be untenable considering the clear provisions of Section 25 of the Trade Marks Act. It is submitted that a notice as per Section 25(3) of the Trade Marks Act was not received by the petitioner, which was an Admitted position as communicated by respondent no. 1, in the reply to the Petitioner’s RTI applications. It is, hence, submitted that the petitioner’s Applications for renewal of the marks, as also such applications requiring Consideration of respondent no. 1 would be the requirement of law. Section 2 It’s Claimed that as a result, the petitioner cannot be placed in a scenario where the petitioner’s requests for renewal are not upholdable.Mr. Kamod argues that the guidelines in Section 25 of the In a similar case, the Trade Marks Act was brought before the courts for consideration. He Submits that in the event that the trademarks had remained on The Registrar of Trade Marks’ register, the owner’s legal entitlement to The courts acknowledged the marks needed to have the same renewed. As stated by In this case, Mr. Kamod, it would be an explicit mandate of the provision of According to Section 25 of the Trade Marks Act, the renewal of the Marks of the petitioner should not be rejected. Regarding his submissions, Mr. Kamod has relied on the Division Bench rulings of this Court in Cipla Ltd. V. Boudhik Sampada Bhawan & Ors., Registrar of Trade Marks ; in A number of petitions in the case of Registrar of Harbans Singh Khanduja & Anr. Trademarks and Anr.2 And regarding the ruling in the Ipca Laboratories Ltd. Case. v. Trade Mark Registrar & Anr.

Respondent Contentions

 Ms. Vyas discovered that Addl. Government Pleader has Rejected this petition, citing the reply affidavit submitted by Respondent No. 1’s main argument is that there has undoubtedly been a delay. Additionally, the petitioner’s tardiness in renewing the registration of the Trade marks in dispute, therefore it is unacceptable that there would be a default on the In any case, a portion of the petitioner may be considered respondent no. 1’s fault. She would argue that the petitioner’s case would be fatally affected by such a protracted delay. Nonetheless, she would legitimately argue that no notice under Section 25(3) of the Trade Marks Act and/or any removal process that the law would require Of the contested marks was ever taken by Respondent No. 1 from the trade mark register with regard to the petitioner’s trade marks in question. Furthermore, she would fairly argue that in order to apply for a mark renewal, the petitioner must follow the steps outlined in the legislation and regulations, which include filing the necessary applications and paying the necessary fees.

Court Analysis and Judgement

The impugned communication Exhibits ‘F’, ‘F-1’ and ‘F- 2’ to the effect that the applications of the petitioner cannot Be renewed, for the reason of delay of more than one year are Quashed and set aside. It is held that the petitioner is entitled to maintain Applications in the prescribed form and on payment of Prescribed fees for renewal of registration of its trademarks In question, which be granted by respondent No.1 in Accordance with law on the petitioner satisfying other Procedural requirements. The petitioner is permitted to make the requisite Applications either in the physical form or by the electronic Module (if so made available) within a period of two weeks From the day a copy of the same is made available, which be Considered and granted as per the above directions within a Period of two weeks thereafter. Rule is made absolute in the aforesaid terms.

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.”

Judgement Analysis Written by – K.Immey Grace

 

 

 

 

 

 

 

 

 

 

 

 

Leave a Reply

Your email address will not be published. Required fields are marked *