Court Orders Renewal Of 'JAGAT(DEVICE)' Trademark Due To Registry's Procedural Lapse

Court Orders Renewal Of 'JAGAT(DEVICE)' Trademark Due To Registry's Procedural Lapse

Introduction

The Delhi High Court has directed the Registrar of Trademarks to renew the registration of the trademark 'JAGAT(DEVICE)' bearing no. 01253200 in class 30. The court held that the petitioner should not be penalized for the lapse of the Registry in failing to follow the procedure prescribed under the Act and the allied Rules.

Factual Background

The petitioner had filed a writ petition seeking directions to the respondents to grant the renewal of the registered trademark 'JAGAT(DEVICE)'. The petitioner contended that the Registrar of Trademarks had not issued the mandatory notice, Form O-3, informing the petitioner about the approaching expiry of the trademark registration.

Procedural Background

The respondents filed a counter affidavit averring that the notice in Form O-3 was duly issued to the petitioner on 14th October 2023, and the same was served at the registered office of the petitioner. However, the respondents failed to produce any documents evidencing proof of service of the said notice.

Issues

1. Non-Receipt of Notice: Whether the petitioner received the statutory notice in Form O-3.

2. Renewal of Trademark: Whether the petitioner is entitled to renewal of the trademark despite failure to renew before the prescribed date.

Contentions

Petitioner's Contentions: The petitioner argued that it did not receive the statutory notice in Form O-3, and therefore, the Registrar's action of not renewing the trademark was unjust.

Respondents' Contentions: The respondents averred that the notice in Form O-3 was duly issued and served on the petitioner.

Analysis and Reasoning

The court relied on the judgment in Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors., which held that the proprietor of a registered mark must not be penalized for the lapse of the Registry in failing to follow the procedure prescribed under the Act and the allied Rules. The court also noted that issuance of Form O-3 is a mandatory requirement under the provisions of the Trade Marks Act, 1999, and Trademarks Rules, 2002.

Final Outcome

The bench of Justice Amit Bansal allowed the writ petition and directed the respondents to issue the certificate of renewal of trademark to the petitioner and restore the same, subject to the petitioner paying the requisite fees and complying with the necessary formalities.

Implications

This judgment highlights the importance of following the procedure prescribed under the Act and the allied Rules by the Registrar of Trademarks. The court's decision emphasizes that the proprietor of a registered mark should not be penalized for the lapse of the Registry, and the renewal of the trademark should be allowed in such cases.

In this case the petitioner was represented by Mr. Nikhil Kumar Chawla, Advocate.