Charanjiv Kumar Taneja Trading as Chirag Enterprises v. The Registrar of Trade Marks

1. The present petition has been filed seeking a direction to the respondent/Registrar of Trade Marks to restore the Trademark Application No.576003 in class 28 filed on behalf of the petitioner.

2. As per the facts stated in the petition, the trademark “TIGER” (device) was registered in favour of the petitioner in class 28 on 26th June,

1992. A renewal application was filed in June, 1999 and the renewal was granted for a period of seven years expiring on 26th June, 2006. Thereafter, the petitioner did not apply for any further renewal. After a hiatus of sixteen years, the petitioner tried to file a renewal application through online mode in April, 2022. Upon not being successful, the petitioner filed an RTI application on 26th April, 2022. A response was received to the said RTI application, wherein it was stated that O[3] notice as mandated under Rule 58 read with Section 25(3) of the Trade Marks Act, 1999 was generated on 21st March, 2016, however, details thereof were not traceable. Subsequent requests were made on behalf of the petitioner on 23rd August, 2022 and 13th September, 2022 seeking renewal of the mark, which were not acceded to.

3. Accordingly, the present writ petition has been filed on behalf of the petitioner.

4. Notice in the petition was issued and accepted on behalf of the respondent on 6th January, 2023.

5. Counsel for the respondent states that he does not wish to file a reply and shall make oral submissions.

6. Counsel for the petitioner has relied upon the judgment of a Division Bench of this Court in Union of India and Ors. v. Malhotra Book Depot, MANU/DE/0562/2013 in support of his submission that the requirements under Section 25(3) are mandatory and if the Registry did not adhere to the aforesaid statutory provisions, the renewal has to be granted in favour of the applicant even if the said renewal is claimed after a lapse of several years.

7. Per contra, counsel for the respondent submits that the aforesaid judgment is not applicable in the facts and circumstances of the present case as in the judgment before the Division Bench, there was a clear conclusion that the notice under Form O[3] was not issued. The relevant portion of the said judgment is set out below: “21. The learned Single Judge on the basis of the pleadings in the writ petition has concluded that in the present case no notice in Form O-3 has been given. We see no reason, in exercise of appellate jurisdiction and in the absence of BANSAL anything to the contrary being shown, to interfere with the said conclusion of the learned Single Judge in exercise of discretionary powers under Article 226 of the Constitution of India. xxx xxx xxx

26. In the light of the view which we have taken, that removal without following the mandatory procedure prescribed therefor is bad, the judgment of the Supreme Court in Administrator, Municipal Committee, Charkhi Dadri (supra) relied upon by the appellants is of no application. Moreover, the Supreme Court in that case held that once acquisition had become final and the title to the land stood divested, the subsequent non-compliance could not undo what already stood done. However, in the present case, we are concerned with different statutory provisions whereunder according to us removal had not attained finality owing to the procedure prescribed therefor having not been followed. The appeal therefore fails and is dismissed save that the direction given in the impugned judgment to the Registrar to restore and renew the mark is modified to a direction to the Registrar to restore/renew the mark after satisfying that the respondent is the registered proprietor/successor of the registered proprietor of the registered trademark which has expired and that in the interregnum same or similar marks have not been registered.”

8. There is no dispute with the legal position that a mark cannot be removed from the Register of Trademarks without compliance with the provisions of Section 25(3) of the Trade Marks Act, 1999. However, I am in agreement with the submissions of the counsel for the respondent that in the case before the Division Bench, there was a clear finding of the Court that no notice in Form O[3] had been issued. On the other hand, in the present case, as per the reply to the RTI application, it has been stated that notice under Form O[3] had been issued, however, the same could not be traced.

1. The O[3] notice was generated on 01/03/2006 vide letter no.917.

2. Details not traceable.”

9. Counsel for the respondent has relied upon the judgment of the Supreme Court in State of Maharashtra v. Digambar, (1995) 4 SCC 683. The relevant portion of the said judgment is set out below: “14. How a person who alleges against the State of deprivation of his legal right, can get relief of compensation from the State by invoking writ jurisdiction of the High Court under Article 226 of the Constitution even though, he is guilty of laches or undue delay is difficult to comprehend, when it is well settled by decisions of this Court that no person, be he a citizen or otherwise, is entitled to obtain the equitable relief under Article 226 of the Constitution if his conduct is blameworthy because of laches, undue delay, acquiescence, waiver and the like. Moreover, how a citizen claiming discretionary relief under Article 226 of the Constitution against a State, could be relieved of his obligation to establish his unblameworthy conduct for getting such relief, where the State against which relief is sought is a Welfare State, is also difficult to comprehend. Where the relief sought under Article 226 of the Constitution by a person against the Welfare State is founded on its alleged illegal or wrongful executive action, the need to explain laches or undue delay on his part to obtain such relief, should, if anything, be more stringent than in other cases, for the reason that the State due to laches or undue delay on the part of the person seeking relief, may not be able to show that the executive action complained of was legal or correct for want of records pertaining to the action or for the officers who were responsible for such action not being available later on. Further, where granting of relief is BANSAL claimed against the State on alleged unwarranted executive action, is bound to result in loss to the public exchequer of the State or in damage to other public interest, the High Court before granting such relief is required to satisfy itself that the delay or laches on the part of a citizen or any other person in approaching for relief under Article 226 of the Constitution on the alleged violation of his legal right, was wholly justified in the facts and circumstances, instead of ignoring the same or leniently considering it. Thus, in our view, persons seeking relief against the State under Article 226 of the Constitution, be they citizens or otherwise, cannot get discretionary relief obtainable thereunder unless they fully satisfy the High Court that the facts and circumstances of the case clearly justified the laches or undue delay on their part in approaching the Court for grant of such discretionary relief. Therefore, where a High Court grants relief to a citizen or any other person under Article 226 of the Constitution against any person including the State without considering his blameworthy conduct, such as laches or undue delay, acquiescence or waiver, the relief so granted becomes unsustainable even if the relief was granted in respect of alleged deprivation of his legal right by the State.”

10. A reading of the paragraph extracted above would show that the Supreme Court has observed that in cases of undue delay in filing of a petition, the alleged illegal or wrongful acts of the executive cannot be examined for want of records as the executive authority may not be in a position to produce the relevant records due to passage of time. Therefore, the petitioner has to fully satisfy the Court by demonstrating facts and circumstances that justify laches or undue delay.

11. In the present case, the renewed registration of the trademark lapsed in the year 2006 and the petitioner filed an RTI application only in the year 2022 seeking records pertaining to the year 2006. The response to the RTI BANSAL application clearly shows that the notice under Form O[3] was generated on 1st March, 2006. Applying the ratio of the aforesaid judgment, the Trademarks Registry cannot be expected to trace records pertaining to the year 2006 as the petitioner had filed the RTI application only in 2022. The petitioner cannot be permitted to take advantage of his own conduct in approaching the authorities after a delay of sixteen years.