The judgement of the IPAB (dated September 22, 2020) in Eveready Industries India Ltd v. Mrs. Kamlesh Chadha concerns original rectification petitions against two trademark registrations of the respondents – one for the word mark ‘Eveready’ and the other for a logo of Eveready, both in class 8 (screwdrivers, cutting pliers, hand tools etc.). The IPAB allowed the rectifications and directed the removal of the two marks from the Trade Marks Registry. This judgment is a highly fact-oriented and my objective here is not assess whether the conclusion of the IPAB was correct or incorrect.
Instead, I wish to focus on a specific issue that bothered me when reading the judgement. One of the trademarks under challenge was granted under the erstwhile 1958 Act. It was renewed for successive periods of 7 years each, in 1992 and 1999. That is to say, in 2006, one of the respondent’s trademark had to be renewed. It appears that no notice under Section 25(3) of the Trade Marks Act, 1999 was received three months before the expiry in 2006. Further, there was a disputed assignment agreement executed in 2009 in favour of the respondent, and it is pursuant to the same that the assignee/respondent sought for renewal in 2010 (which appears to have been allowed).
One of the main defences of the Respondent was Section 33 of the Trade Marks Act, 1999. Among others, the IPAB rejected this defence on the basis that Section 33 applies only for a registered trademark whereas when the rectification was filed in 2009, the registration of the trademark under challenge had automatically lapsed when the 7 year period expired in 2006 and no restoration application was filed within 1 year. Therefore, the filing for renewal/restoration application in 2010, and the allowance of the same, but effectively deemed void in law.
With respect, the above proposition of law is incorrect and contrary to at least three judgements of various High Courts:
- The judgement of the division bench, Delhi High Court in Union of India v. Malhotra Books Depot, 2013 (134) DRJ 504 (DB);
- The judgement of the division bench, Bombay High Court in Cipla Ltd. v. Registrar of Trademarks & Anr., 2014 (2) Mh.L.J. 315;
- The judgement of the single judge, Madras High Court in M/s. Soudal, Joint Stock Company, Chennai v. The Registrar, Trade Marks Registry, 2016 SCC OnLine Mad 12393.
All these judgements stand for the proposition that the Trade Marks Act, 1999 is a special legislation and that for removal of the trademark from the registry on non-renewal grounds, the procedure contemplated under Section 25 must be strictly followed. Therefore, where the required mandatory notice was not issued by the Registrar of Trademarks under Section 25(3) (to be issued three months before the lapsing of the registration), the trademark cannot be automatically removed from the register. If it was not in dispute that the notice under Section 25(3) was not issued in this case, for the IPAB to have nevertheless concluded that the trademark automatically lapsed in 2006 (plus 1 year), is a clear error in law.
Note: I represent/have represented clients on related and unrelated issues. Views expressed here are personal.
Please click here to view another post on this decision, discussing the issue of retroactive trademark assignment agreements.