TMI Blog2012 (2) TMI 631X X X X Extracts X X X X X X X X Extracts X X X X ..... for seeking condonation of delay in filing the appeal, condone the said delay. The writ petition from which this appeal arises was filed by the respondent pleading:- (i). that the predecessors of the respondent, (which is stated to be a partnership firm of Ms. Satish Bala Malhotra, Ms. Monica Malhotra Kandhari and Ms. Sonica Malhotra Kandhari) namely Shri Ashok Kumar Malhotra and late Shri Balbir Singh, trading as M/s. Malhotra Book Depot had applied for and were granted registration of the Trademark MBD in Class 16 for the goods publications (printed) and books vide Trade Mark Registration dated 23rd November, 1970; (ii). the said trademark was thereafter duly renewed from 23rd November, 1977 to 23rd November, 1984; (iii). on 1st April, 1992 the constitution of M/s. Malhotra Book Depot was changed and a fresh Partnership Deed was executed between the new partners i.e. Shri Ashok Kumar Malhotra and Ms. Satish Bala Malhotra; (iv). on the demise of Shri Ashok Kumar Malhotra the constitution of the respondent M/s. Malhotra Book Depot was again changed and a fresh Partnership Deed was executed between Ms. Satish Bala Malhotra, Ms. Monika Malhotra Kandhari and Ms. Sonica ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... her defences were also taken but the same neither form part of the judgment of the learned Single Judge nor have been urged before us and need is thus not felt to dilate on the same. 3. The learned Single Judge allowed the writ petition observing/finding/holding: - (a). that the Registrar in its counter affidavit, in response to the unequivocal plea in the writ petition, that the Notice in Form O-3 was not received by the respondent, had merely stated that removal of the mark could not have been done without following the due process as per the provisions of law and had thus made only a presumptive statement; further, the Registrar in para 7 of the counter affidavit had admitted that in various cases O-3 Notices had not been issued; the learned Single Judge thus concluded that in the respondent's case 0-3 Notice had not been issued as provided for in Rule 67; (b). that under Section 25 of The Trade and Merchandise Marks Act, 1958 (the Act) (which was applicable in the year 1984 when the Registration of the mark of the respondent expired), the application for renewal of the registration could be made upon receipt of the Notice in Form O-3; (c). that the Registrar cou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... datory in the sense that non-compliance with it leads to nullification of the acquisition which had already become final. It was further held that such non-compliance cannot also result in divesting of title or any obligation to restore the unutilized portion (s) of the acquired land to its erstwhile owners. The Supreme Court held that since the said Section 44 A, though using the expression 'shall', did not provide the consequence of non-compliance with its requirement, it could not be held to be mandatory. On the basis of the said judgment it is argued by the counsel for the appellants that no consequences have been provided of non-compliance with Section 25(3) requiring issuance of the Notice in Form O-3 and thus the issuance of Notice in Form O-3 cannot be said to be mandatory. It is further argued that non-issuance of Notice in Form O-3 would not extend the duration of registration indefinitely. Reliance has also been placed on Order dated 16th April, 2012 of the Intellectual Property Appellate Board (IPAB) in OA No. 59 60/2011/TM/KOL titled Pernod Ricard India Private Ltd. Vs. The Controller General of Patents, Designs and Trade Marks holding that the Act does not mak ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e counsel for the appellant that if the view taken by the learned Single Judge is to be followed, it would open floodgates of applications for renewal/registration of trademarks which have lapsed long time ago, in as much as the Registrar does not have available with him the records of dispatch of Notices in Form O-3 prior to the removal of the trademarks. 8. Considering the importance of the issue raised and the difference in the opinion of the learned Single Judge of this Court and the IPAB, we embark upon interpreting the relevant provisions of the Act and the Rules. Section 25 of the Act is as under:- 25. Duration, renewal and restoration of registration (1) The registration of a trade mark shall be for a period of seven years, but may be renewed from time to time in accordance with the provisions of this section. (2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of seven years from the date of expiration of the original registration or of the last renewal of registrati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... stration of a trade mark the renewal fee has not been paid the Registrar may remove the trade mark from the register and advertise the fact forthwith in the Journal. 69. Restoration and renewal of registration. An application for the restoration of a trade mark to the register and renewal of its registration under sub-section (4) of section 25, shall be made on Form TM - 13, within one year from the expiration of the last registration of the trade mark accompanied by the prescribed fee. 70. Notice and advertisement of renewal and restoration. Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal. 10. The reasoning of the IPAB, adopted by the counsel for appellants, is predicated on renewal, removal and restoration being distinct matters and the deficiency even if any in removal, not affecting the renewal. The said reasoning however to us appears to be contrary to the legislative intent. The legislature and its delegatee, not only in the Act but also in the Rules, have clubbed Duration, renew ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Section 25, the inescapable conclusion is that though the period of registration was prescribed as seven years, renewable from time to time on application in the prescribed manner within the prescribed time [under Sub-Sections (1) (2)] but the removal of the mark from the register has been made subject to sending of a notice in the prescribed manner calling upon the registered proprietor to renew the mark and permitted only upon the failure of the registered proprietor to do so [under Sub-Section (3)] and not merely on the failure of the registered proprietor to apply for renewal within the prescribed time. 13. The Supreme Court, though in the context of a Rent Legislation, in E. Palanisamy Vs. Palanisamy (2003) 1 SCC 123 reiterated in Sarla Goel v. Kishan Chand (2009) 7 SCC 658, emphasized the importance of following the statutory procedure step by step and held an earlier step to be a precondition for the next step and it being impermissible to straightaway jump to the last step. It was further held that the last step can come only after the earlier step has been taken. The Trade Marks Act is an Act for the benefit of the proprietors of trademarks (refer Thukral Mechanica ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion. However the removal for non-renewal has not been made automatic. If the registered proprietor does not make an application for renewal till two months prior to the expiration of the last registration, the Registrar is required to notify the registered proprietor of the approaching expiration (under Rule 67) and is to remove the trademark from the register only thereafter, as is evident from Rule 68 having been placed after Rule 67. If removal pursuant to non-renewal was to be de hors the notice for removal, Rule 68 would have followed Rule 66 and not Rule 67. Though Rule 68 permits removal upon expiration of last registration and non-payment of renewal fee and does not make the same dependent upon compliance of Rule 67 but to read Rule 68 as permitting removal de hors compliance of Rule 67 would be contrary to Section 25(3) which as aforesaid permits removal only if at the expiration of the time prescribed in the notice required to be sent thereunder, the registered proprietor has not applied for renewal. It is a settled principle of law that rules framed under a statute cannot override the statute. In Ispat Industries Ltd. v. Commissioner of Customs (2006) 12 SCC 583 it is h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation is, what would be the effect of a removal from the register, without following the prescribed procedure. Section 25(4) makes the period of one year, prescribed for restoration of the mark to the register and renewal thereof, begin from the expiration of the last registration and not from the date of removal. We find it strange that though the right to restoration accrues on removal but the time prescribed to apply for restoration is from the expiry of the last registration. What will happen if removal itself is after one year from the expiry of the last registration as is the case here. Section 25(4) if literally read, applies only if the mark has been removed. If it were to be held that under Rule 66 renewal has to be applied for only within six months prior to the expiration of the mark and not after the expiration, then owing to the mark being not removed, the registered proprietor would not be entitled to avail of Section 25(4). The period of one year provided under Section 25(4) for applying for renewal would then become illusory. Section 25(4) can thus be held to be applicable only where removal is simultaneous to the expiration and not where removal is not so and is ef ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ory and directory provisions held that where a statute imposes a public duty and proceeds to lay down the manner in which the duty shall be performed, the injustice or inconvenience (to the public authority) resulting from a rigid adherence to the statutory prescriptions may not be a relevant factor in holding such prescription to be only directory. Though the said matter is referred to a larger Bench, but that does not affect the efficacy of the aforesaid. Earlier, a five Judge Bench in Mysore State Electricity Board Vs. Bangalore Woolen, Cotton and Silk Mills Ltd. AIR 1963 SC 1128 also, faced with an argument that if a question between the Electricity Board and the consumer were to be referred to arbitration, then there may be thousands of arbitration, which the legislature could not have contemplated, held that it was an argument based on inconvenience and that inconvenience is not a decisive factor in interpreting a statute. We are of the opinion that Section 25 having imposed a duty on the Registrar to effect removal of the mark only after sending the notice and upon failure of the registered proprietor to comply therewith, the argument, and which also prevailed with the IPAB, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rademark is infringed when a person not being the registered proprietor uses in the course of the trade, a mark which is identical with or deceptively similar to the trademark which is registered. Since as per Section 2(r) a registered trademark is a trademark which is actually on the register, under Section 29, registered trademark would be infringed even though its registration may have expired, so long as it has not been removed from the register. 25. Section 26 supra would become otiose/redundant if it were to be held that the rights of a registered proprietor to restoration and renewal of mark extinguish on the expiry of one year from the expiration of the last registration and irrespective of whether the trademark is actually removed from the register immediately on such expiration or after considerable time. If the registered proprietor whose trademark has expired, irrespective of whether the same had been removed or not from the register were to be left with no right therein, there would not have been any need in Section 26 to preserve such rights for a period of one year from the removal. 26. In the light of the view which we have taken, that removal without followin ..... X X X X Extracts X X X X X X X X Extracts X X X X
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