Decided On: 9th March 2018
Case Name: Epsilon Publishing House v. Union of India & others
The division bench of Delhi High Court upholds the order of single judge ruling that the owner of Trademark cannot be punished by registrar for not complying with trademark rules.
Appellant’s writ petition challenging the renewal of registration of trademark “LOKPRIYA EASY NOTES” was dismissed by learned Single Judge against which he preferred an appeal in Delhi High Court. Appellant also filed a suit for trademark infringement and rendition of account at Kanpur District Court against respondent no. 3 (Jain) for using trademark “LOKPRIYA EASY NOTES. Appellant further claimed that they had adopted trademark “EASY NOTES” in 1999 and applied for registration of trademark “ E.A.S.Y” and “EPSILON”. They got interim-relief in the form of ex-parte order preventing Jain from using “EASY NOTES” or any other prefix. Jain in its written statement argued that they had been using LOKPRIYA EASY NOTES since 1977 and got the same registered on 07.03.2007 after due advertisement. The appellant in its appeal contented that renewal of registration granted to Jain was unlawful. Following were the main issues in front of the High Court.
- Was the Renewal of Registration done by Registrar of Trademark was in accordance with law
- Was the learned Single Judge correct in dismissing the petition of appellant?
The Counsel for the petitioner submitted that order passed by learned Single Judge overlooks section 150 of the Trademark Act 1999 according to which filling of application or a request would be made on the day when the fee fixed by the Act and Rules are paid. In this case, the required fee was paid on 17.04.2017, So the filling in terms of Section 150 was in fact from 17.04.2017 and not from 19.05.2011 which was the date on which application for renewal was filled by Jain. As a result, Trademark of the respondent should have been removed from the register as it was not timely renewed. The Court observed that Trademark registry office had kept respondent’s renewal application pending even though they had filed the same on 19.05.2011 which was well within the prescribed period as given under section 25(3). Moreover, The Court also said that defect with respect to surcharge shortage came to the notice of authorities when notice was issued in this regard. Therefore, The Learned Single Judge was correct in dismissing the appellant’s petition. Renewal of registration was in accordance with law. Last but not the least, the court also mentioned that petitioners in their infringement suit never attacked the respondents on registration.
Learning of the Case
The proprietor of a Registered Trademark cannot be penalised for non-compliance of rules when there was a mistake on the part of trademark registry office.
Keywords: Trademark, Trademark Rules, Punished, Registrar, Trademark Owner