Trademark

UOI v. Malhotra Book Depot- restoration of trademark.


Union of India v. Malhotra Book Depot is a recent case (decided on the 27th of February, 2013) by the Delhi High Court. This case was regarding the restoration of the trademark of Malhotra Book Depot (henceforth Respondent). The Respondent had a registered trademark which had not been renewed post 1984. Twenty six years after the expiration of the trademark, Respondent filed an application for restoration and renewal of the trademark. This application was not accepted by the Registrar of Trademarks. The applicable rule in 1984 at the time of expiration of the Trademark was The Trade and Merchandise Marks Act, 1958 and the corresponding rules. It is Respondent’s case that a requirement of statutory notice in Form O-3 as required under these rules were not complied with. This notice is to remind Respondent that their registration is expiring and can be renewed. Therefore, Respondent contends that the Registrar cannot deny restoration/renewal of the Trademark at this juncture.
The Registrar of Trademarks (henceforth Appellant) contended that the fact of removal of the Trademark was notified in the Trade Mark Journal for non-payment of renewal fees and that such removal could not be without following the due process as per the provisions of law.  Appellant contended that Respondent was trying to take advantage of the non-availability of records with respect to Form O-3 with the Appellant. Moreover, Appellant submitted that the consequence of deciding the case in Respondent’s favour would be opening the floodgates of applications for the renewal/ restoration of trademarks which have expired a long time ago for the simple reason of non-availability of records with the Appellant.
The Single Judge Bench which first heard this case decided the case in favour of the Respondent. The learned Single Judge found that the Appellant’s contention that due process of law would have been followed during the removal was merely a presumptive statement and that Appellant themselves had admitted that they   had not issued the statutory Form O-3 notice. Therefore the removal of the trademark was not in accordance with Section 25(3) of The Trade and Merchandise Marks Act, 1958 read with  Rules 67 and 68 of the Trade and Merchandise Marks Rules. Hence, the learned Single Bench held that the Respondent’s application for restoration and renewal of the trademark cannot be held to be barred by time.
Before the Division Bench of the Delhi High Court, Appellants also contended relying on an IPAB order that restoration, renewal and removal were distinct matters and therefore any deficiency in the removal would not affect the renewal. The Delhi High Court after analysing the legislative intent behind Sec. 25 of the Trade and Merchandise Marks Act and the corresponding rules held otherwise. The Delhi High Cout also ruled that the consequence of a ruling in Respondent’s favour would not deter them from upholding the legislative intent.
Additionally, the Court ruled that the fact that records of the Form O-3 notices were unavailable was not a sufficient reason to hold that the Registrar was not bound by his duty to send the notice in the first place.The Court held that Sec. 25(4) of the Act which stated that an application for renewal must be made within a year from the expiration of the last registration for restoration is applicable only when removal is made in accordance with Sec. 25(3) of the Act and the corresponding rules which was not done in this case. The Court also looked at Sec. 26 of the Act and other provisions and have ruled that Sec. 25(4) of the Act must be understood as allowing an application for renewal for one year since the date of removal and not the date of the last registration for restoration. 
The Court finally ruled in favour of the Respondent as they came to the conclusion that the removal of the trademark by the Registrar had not attained finality as the prescribed statutory procedure under Art. 25 of the Act had not been followed. The Court modified the order of the learned Single Bench and issued an order to the Appellant to restore/ renew the trademark after being satisfied that the Respondent was the registered proprietor/ successor of the registered trademark which expired twenty six years ago. As this course of action was suggested by Respondent themselves, this was a reasonable order issued by the Delhi High Court. 
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L. Gopika Murthy

Gopika is a fourth year student at National Law School of India University, Bangalore. She was formerly the Chief Editor of the Indian Journal of Law and Technology. Her first exposure to Intellectual property law and SpicyIP was through the University Moot Rounds at NLSIU, Bangalore in her first year. She has been regularly following the developments in the field of IPR since then and she hopes to contribute to the reporting of such developments. Her areas of interest in IP include copyrights, open access, fair dealing and trademarks.

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