India: Delhi High Court seeks response from the Registrar of Trade Marks to explain the uploading of backdated O-3 notices on its website

India: Delhi High Court seeks response from the Registrar of Trade Marks to explain the uploading of backdated O-3 notices on its website

October 29, 2019

By Arpit Kalra and Ananyaa Banerjee

An O-3 notice is sent to the registered proprietor of the trademark to remind him/her of the expiry of their marks validity under Section 25(3) of the Trade Marks Act, 1999. The Delhi High Court has recently ruled in the case of Asianet Star Communications Pvt Ltd. v. The Registrar of Trademarks & Anr.[1] that the Registrar of Trade marks need to explain how the O-3 notice was uploaded on its websites in a backdated manner. The Petition was filed by Asianet Star Communications Pvt. Ltd (hereinafter referred to as the ‘Petitioner’) against the Registrar of Trademarks and Examiner of Trade Marks (hereinafter referred to as the ‘Respondents’).

Facts:

  • Petitioner’s mark was deemed to have been abandoned for not filing the renewal fee and thus the Petitioner asked for permission to renew the mark.
  • According to the Petitioner, no O-3 notice in respect of its trademark was uploaded on the website as of June 20, 2019.
  • After this, the Petitioner applied for renewal, along with the fees.
  • On July 30, 2019, the Petitioner learned that an O-3 notice had been uploaded bearing the date of September 5, 2016.

Petitioner’s Contentions:

  • The Petitioner submitted that the notice was backdated as it was titled as ‘Form RG-3’ which came into effect when the new Trade Mark Rules were notified on March 6, 2017.
  • The Petitioner contented that this O-3 notice was never issued and that the mark should not be considered to be abandoned.

Respondent’s Contentions:

  • The Registrar of Trade marks said that the O-3 notices were sent on September 12, 2016, to the Petitioners on their postal address.

Court’s Analysis

  • The Court said that the backdated nature of the O-3 notices was clear from the title ‘Form RG-3’ for notices that are alleged to be issued in 2016.
  • The Court ordered a senior official from the Registrar of Trademark to be present in the Court on the next date of hearing.
  • The Court also directed the Examiner of Trade Marks to be present in Court on the next date and file a personal affidavit to explain when this particular form was uploaded and how it was communicated to the Petitioner.
  • The Court also allowed the petitioner to approach the Registrar of Trademarks in Delhi and deposit the renewal fee. The Court also said that the Petitioner’s trademark shall not be treated as an abandoned mark till the next date of hearing and thus, the Petitioner continues to enjoy all rights as the registered proprietor of the mark.

[1] W.P.(C) 11284/2019

 

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