Union of India v. Malhotra Book Depot

Union of India v. Malhotra Book Depot

2013 (54) PTC 165 (Del) (DB)

FACTS:

The Respondent had a Trade Mark ‘MBD’. The said Trade Mark was to be renewed on 23^rd November, 1984. When in April, 2010 the Respondent filed a suit for permanent injunction restraining infringement of it’s Trade Mark ‘MBD’ it applied for a certificate for use in legal proceedings. In response, it was informed that no records/details of the said mark could be traced in the database. Later it was realized that the Trade mark had not been renewed after 23^rd November, 1984. The Respondent applied for renewal and restoration of the said trademark on 7^th October, 2010 but the said application was not accepted.

Respondent sought a writ of mandamus against the Appellant, Office of Registrar of Trade Marks, for restoration and renewal of the Trade Mark before the High Court of Delhi. The defense of the appellant was that the writ suffered from delay and laches, factum of removal of trademark was notified in Trade Mark Journal No. 997 dated 16^th December, 1990 for non-payment of renewal fees; respondent was taking advantage of the fact that 26 years old record of dispatch of notice would not be available with the registrar.

HELD:

The Learned Single Judge in it’s writ jurisdiction allowed the prayer of the Respondent and directed the Trade Marks office to restore and register the said mark without prejudice to rights of any third parties, inter alia, on the following grounds:

• 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;
• Said removal of the registered Trademark cannot be done without prior notice to the registered proprietor in the prescribed form;
• 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;
• 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.
• 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.

Thus, the appellant being aggrieved by the order of the Learned single judge filed an appeal before the Division Bench of the Hon’ble High Court of Delhi, whereby the Hon’ble Division Bench dismissed the appeal of the appellant on same grounds as the learned single judge had allowed the writ of the Respondent. However, the Division Bench modified the order of the Single Judge to the effect that the Registrar is directed 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.

Author: Ankit Rastogi

Full text (Single Judge)

Full text (Division Bench)