CM APPL. 46494/2019 (for exemption)
1. Allowed, subject to all just exceptions. Application is disposed of.
W.P.(C) 11284/2019 & CM APPL. 46493/2019
2. Further to the last order wherein the Trade Marks Registry was called upon to explain the uploading of the O-3 notice as RG-3 notice, the Senior Examiner of Trade Marks – Ms. Shikha Dewan and Mr. Hemant Kumar from the Legal Section of the Trade Marks Registry are present in Court. Mr. Gaurang Kanth, ld. counsel, has also handed over an affidavit of Ms. Dewan, which is extracted below:
4. That as per record of the Trade Marks Registry, the Trade Mark no.586576 in class 9 was due for renewal on 11.12.2016. The O-3 notice with a fee of Rs.5000/- was generated for the said Trade Mark on 05.09.2016 and was dispatched by the office to the address of the registered proprietor on record i.e. C-20 Qutab Institutional Area, New Delhi-110016 vide dispatch no.9796 dated 12.09.2016 through speed post. It is pertinent to mention that the Respondent do not retain copies of the notices sent as it is computer generated form. However, the receipt is duly recorded and maintained. A copy of the relevant portion of the Dispatch Register is enclosed herewith as ANNEXURE A.
5. That Trade Marks Rules, 2017 came into force w.e.f 06th March, 2017 whereby the forms and fees were changed and revised. As per the 2017 rules, the erstwhile form O-3 notice was then changed to form RG-3 notice and the fees was changed from Rs.5000/- to Rs.1,0000/- (physical filing).
6. That I do not have any personal knowledge, as to why the O-3 notice dispatched on 12.09.2016 in Trade Mark no.586576 is being reflected in the website as RG-3 notice (with amended fee) which came into effect only from 06.03.2017.
7. That after discussions with the IT development team of NIC, which manages the automation of systems for Trade Marks Registry Office, it has come to my knowledge that since the forms and notices of TMR office were changed after the implementation of the 2017 rules, the necessary modifications were made in the Trade Marks System as well as in the website of the CGPDTM. Under these changed circumstances, the format of O-3 notice was also changed as RG-3 notice and fee for renewal was changed from Rs.5000/- to Rs.10,000/-.It also transpired after discussions with the IT officials that due to technical errors, some of the O-3 notices issued by the office even before 06.03.2017 were shown in the form of RG-3 notice asking renewal fee of Rs.10,000/- per class as per the new Trade Marks Rules 2017, on the ‘outgoing correspondences’. However, the physical copies which were sent to the concerned proprietor’s registered offices remained in the proper format.
8. That after discussions, it has also been communicated by the IT department that the error reflecting in the website has now been rectified. A copy of the statement of the concerned Technical Director, NIC, Govt Of India is annexed herewith as ANNEXURE -B.
9. That the O-3 notice in the present case was dispatched to the address available with the Respondent’s office at the relevant time i.e. C-20 Qutab Institutional Area, New Delhi-110016. It is submitted that the Petitioner had filed a TM Form 34 for change of his address on 24.04.2007. However, the said Form 34 has been allowed only on 28.09.2017 and accordingly the address of the Petitioner was updated to: A/5, Haridwar Apartment, 3, Kush Kumar Road, Chennai-600034, Tamil Nadu. In view thereof, the O-3 notice dated 05.09.2016 was dispatched to the earlier address available with the Respondent in the relevant year of 2016.
10. That in view of the delay that had occurred in processing the TM Form 34 of the Petitioner, the Respondent is willing to process the renewal of the Trade Mark No.586576 of the Petitioner. Accordingly, on 30.10.2019, the Petitioner has deposited the requisite fee i.e. Rs.20,000/- towards renewal of the Trade Mark No.586576 and the same has been accepted by the Respondent.
3. The affidavit is taken on record. A perusal of the above shows that there have been several lapses in the functioning of the Trade Marks Registry in respect of Trademark No. 586576 in class 9. The first lapse was that the Form TM-34 which was submitted by the Petitioner on 24th April, 2007 for change of the Petitioner’s address was not processed till 28th September, 2017 i.e., for a period of ten years. Since the Form TM-34 was not processed, the renewal notice i.e., the O-3 notice was sent at the wrong address of the Petitioner at C-20, Qutab Institutional Area, New Delhi – 110016. The new address which the Petitioner had sought to substitute the old address with was A/5, Haridwar Apartment, 3, Kush Kumar Road, Chennai - 600034, Tamil Nadu. If the Form TM-34 had been allowed and processed in a timely manner, the O-3 notice would have been dispatched correctly to the new address of the Petitioner and the entire sequence of events which has transpired, resulting in the abandonment of the Petitioner’s trade mark, would not have occurred.
4. The second lapse is that the O-3 notice, though dispatched to the incorrect address on 12th September, 2016, was not uploaded on the website of the Trade Marks Registry, contemporaneously. The said O-3 notice was not visible to the counsels for the Petitioner even as of May/June, 2019, when inspection of the file was requested for and renewal requests were filed by the Petitioner’s lawyers. In fact, a perusal of the ‘Uploaded Documents’ chart, which is visible on the Registry’s website and placed at page 62 of the file shows that the O-3 notice was uploaded only on 30th July, 2019 i.e., a gap of almost three years.
5. Considering that these two lapses clearly occurred, queries were put to the two officials who are present today from the Trade Marks Registry. The Sr. Examiner of Trade Marks – Ms. Shikha Dewan submits that the renewal requests are issued by a Centralized Renewal Department and Form TM-34 is not processed by that department. The Form TM-34 is dealt with by a separate Post Registration section. Clearly, there is something amiss in the functioning and procedural administration of the trade mark registration files. If separate departments deal with separate forms, then obviously such lapses are bound to occur and such procedure would result in enormous inefficiency in the processing of trade mark applications. Thus, there is a need to streamline the processing of trade mark applications till registration, and even thereafter. The procedure which is currently being followed is clearly not satisfactory as it is resulting in enormous confusion, as is evident from the present case. Similar cases have also been filed before this Court, including WP(C) No.10040/2019 titled M/s. B.E.C. Industries v. Union of India, wherein an identical situation has arisen.
6. In order to obviate the recurrence of such situations in the future, which have clearly become endemic in the Trade Mark Registry, a proper procedure is required to be established for the processing of trade mark applications and registrations. Accordingly, the Registrar of Trade Marks shall place on record an affidavit of Mr. Hoshiar Singh, the Head of the Trade Marks Registry Office, Delhi, detailing the following aspects:
i) the current procedure for processing of trade mark applications, including the various steps starting from filing, acceptance of fee, allocation of application number, examination and generation of examination report, acceptance of responses, hearings held, if any, orders passed on the said files, grant of trade mark registration certificates, change of address, change of name, processing of licences and assignments, renewal notices, etc. and whether they are dealt with by one officer or by different departments, even if they relate to same application. The same may be explained by means of a flow chart;
ii) the manner and procedure for uploading of documents which is currently being followed at each and every stage by the Trade Marks Registry;
iii) whether it is considered efficient to allocate a particular trade mark application to a specific officer who would then process the various forms filed in respect of that application so that the familiarity of the officer with the file would enable efficient processing of the same;
iv) insofar as post-registration formalities, such as renewals, assignments, etc. are concerned, whether the same should be dealt with by a separate department and if so whether post registration formalities of specific registered trade marks
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ought to be handled by a single officer. 7. The above be placed in the form of an affidavit so that this Court may consider passing appropriate directions for streamlining of the processing of trade mark applications on the next date of hearing. 8. Insofar as the Petitioner’s application is concerned, since the Registry has, in paragraph 10 above, stated that they are willing to process the renewal of the trade mark, it is directed that the said process be undertaken and the renewal certificate be issued to the Petitioner. 9. The official dispatch register which was shown to the Court has been returned to the ld. counsel for the Respondent. 10. A technical person from the National Informatics Centre and a senior officer from the Trade Mark Registry, Delhi who is familiar with the affidavit to be submitted to the Court, shall remain present in Court on the next date of hearing. 11. List on 5th December, 2019.