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Delhi HC directs Registrar of Trade Marks to explain backdated uploading of O-3 notice on website

Delhi HC directs Registrar of Trade Marks to explain backdated uploading of O-3 notice on website

Aditi Singh

The Delhi High Court has directed The Registrar of Trade Marks to explain how O-3 notice was uploaded on its websites in a backdated manner. An O-3 notice is sent to the registered proprietor of a trademark as a reminder before the expiry of a trademark’s validity under Section 25(3) of the Trade Marks Act, 1999.

The order has been passed by a Single Judge Bench of Justice Prathiba M Singh in a petition by Asianet Star Communications Pvt. Ltd.

The petitioner stated that its trademark was deemed to have been abandoned for non-filing of the renewal fee, and thus sought permission to renew the same. The stand of the Petitioner was that the O-3 notice for renewal was not issued by the Registrar of Trade Marks.

The petitioner asserted that when it checked the website of the Trademark Registry around June 20, 2019, no O-3 notice in respect of its trademark was uploaded on the website. Thereafter, the petitioner applied for renewal, along with the past fee/penalty.

Surprisingly, on July 30, 2019, the petitioner found that an O-3 notice had been uploaded with the date of September 5, 2016. The petitioner contended this O-3 notice was backdated as it was titled as “Form RG-3” which came into effect only on March 6, 2017, when the new Trade Mark Rules were notified. The petitioner thus contended that the O-3 notice was never issued and the mark ought not to be treated as abandoned.

The Registrar of Trade Marks argued that the O-3 notices were sent on September 12, 2016, to the petitioner to their postal address.

After hearing the parties, the Court noted that the issue of backdated O-3 notice was raised in another writ petition as well.

“This petition, as also W.P. (C) 10040/2019, raise serious issues in respect of uploading of O-3 notices in a backdated manner.

Holding that the backdated nature of the O-3 notices was prima facie evident from the use of the title “Form RG-3” for notices allegedly issued in 2016, the Court remarked,

The Registrar of Trade Marks ought to explain as to how such a glaring inconsistency can exist on its own website. Explanation also ought to be given as to the manner of uploading O-3 notices and how O-3 notices are being uploaded as RG-3 notices.”

The Court thus directed that a senior official from the Registrar of Trade Marks be present in Court on the next date along with the relevant records of the petitioner’s trademark.

Additionally, the Examiner of Trade Marks who signed the petitioner’s “form RG-3” notice has also been directed to file a personal affidavit to explain when this particular form was uploaded and in what manner it was communicated to the petitioner, along with the relevant documents to support the uploading.

The Examiner of Trade Marks shall also be present in Court on the next date, as per the Court’s order.

In the meantime, the petitioner was allowed to approach the Registrar of Trade Marks, Delhi and deposit the renewal fee physically if not through the online method. The Court also clarified that the registration of the petitioner’s trademark shall not be treated as abandoned till the next date and the petitioner shall continue to enjoy all rights as the registered proprietor of the mark.

The petitioner was represented by Advocates Saikrishna Rajgopal, Siddharth Chopra, Nitin Sharma, Sumant Narang, Abhiti Vacher, Vivek Ayyagari.

The Registrar of Trade Marks was represented by Central Government Standing Counsel Gaurang Kanth with Advocates Eshita Baruah, Prapti Mehta.

Read the Order: