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IN THE
HIGH COURT OF DELHI AT NEW DELHI
+
W.P.(C)
11872/2005, CM APPLs. 8809/2005 & 8811/2005
JAI BHAGWAN GUPTA .....
Petitioner
Through: Mr. Sudershan K. Bansal, Mr. Ajay
Amitabh Suman and Mr. Vinay
Shukla,
Advocates. (M:9990389539)
versus
REGISTRAR OF TRADE MARKS &
ORS. Through: Mr. Vishal
.....
Respondents
Mittal, Senior Panel
Counsel for R-1, 2 & 3.
(M:9311177388)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
The present writ petition has
been filed by the Petitioner - Shri Jai Bhagwan Gupta, proprietor of M/s.
Bhagwan Kirana Company, against the Registrar of Trademarks and Respondent Nos.
4 & 5. The Petitioner has used the trademark “JEERA PUJARI” in respect of jeera
and sauff since 1980. The Petitioner
also has registration for “JEERA PUJARI”
word mark since 1987 bearing no.472153. The said mark has been duly renewed by
the Petitioner. The Petitioner also has a second trademark bearing no.631107
for
“JAI PUJARI BRAND” label.
2.
The grievance of the Petitioner
is that despite the Petitioner having registered the trademarks for “JEERA PUJARI” word mark and “JAI PUJARI
BRAND” label mark, the Registrar
of Trademarks is advertising various
trademarks consisting of the word “PUJARI” in respect of identical goods
falling in Class 30. It is, thus, submitted that though the Petitioner has
filed oppositions in respect of these marks, the same has become a
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burden
upon the Petitioner who is saddled with costs for oppositions and for
keeping a watch on the trademark journal. Under such circumstances, the
Petitioner
prays for the following reliefs:
“(i) issue a
writ of certiorari quashing the impugned publication of the trademarks of respondent no. 4 and 5 published in
the trade mark journals being ANNEXURES P - 4 & 5 as illegal and
unconstitutional and proceedings taken towards its registration;
(ii)
issue a writ of mandamus directing respondents no. 1 and 2 to perform
the-official functions in consonance with provisions of law and principles of natural
justice and further to desist from publishing trademarks identical with or
deceptively similar to petitioner's trade marks in trade mark journals without
following due procedures and provisions of law as envisaged under the Trade
Marks Act and Rules there under;”
3.
The submission of Mr. Bansal, ld.
counsel appearing for the Petitioner is that the Trademark Registry ought to be
examining trademark applications in a proper and efficient manner, so as to
ensure that even marks which are identical to registered trademarks, are not
cleared for advertisement, which in turn, increases the burden upon the
applicants and their attorneys. It is his submission that the registered
trademark of the Petitioner consists of the word mark “PUJARI” for spices in
Class 30 and in the same Class, similar word marks are being permitted to be
advertised for registration. He submits that the stand of the Registrar of the
Trademarks is merely that the Petitioner ought to exercise the statutory remedy
and nothing more. Reliance is placed upon Sections 9 and 11 of the Trademarks
Act, 1999 (hereinafter ‘the Act’).
4.
Mr. Vishal Mittal, ld. Senior
Panel Counsel, appearing for the Registrar of Trademarks submits that there are
two applications against
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11872/2005 Page 2 of 8
which the Petitioner has raised grievance i.e. trademark application
bearing no.1188208 already stands abandoned and the second application bearing
no.1285292 is pending for registration and the Petitioner has already opposed
the said mark. The Petitioner, thus, having availed the statutory remedy, is
not entitled to seek any relief by way of the present petition.
5.
This Court has perused the record
and heard ld. counsels for the parties. The obligation of the Registrar of
Trademarks whenever a new trade mark application is filed, would be to examine
the application in terms of Sections 9 & 11 of the Act, as well as the
other relevant provisions in order to see if there are any grounds, which are
attracted in respect of the said application. Section 9 of the Act consists of
the absolute grounds for refusal of a trademark and Section 11 consists of the
relative grounds for refusal of registration of a mark. The prohibitions are
contained in Section 13 and further conditions are stipulated under Sections 14,
15 & 16 of the Act. The completion of formalities are also to be examined
by the Registrar of Trademarks. The examiner has also to consider if the
applicant is entitled to registration of the mark due to honest and concurrent
usage under Section 12 of the Act. After examining the mark in detail, as per
the provisions of the Act, the Registrar of Trademarks has two options i.e.
firstly - to accept the mark and direct advertisement of the same in the
trademark journal or secondly - without accepting the mark, advertise the mark
before acceptance under the proviso of Section 20(1) of the Act. Section 20 is
reproduced below for ready reference:
“20. Advertisement of application.-application
for registration of a trade accepted whether absolutely or subject
(1)
When an mark has been
to conditions or
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11872/2005 Page 3 of 8
limitations,
the Registrar shall, as soon as may be after acceptance, cause the application
as accepted together with the conditions or limitations, if any, subject to
which it has been accepted, to be advertised in the prescribed manner:
Provided that the Registrar may cause the application to be advertised
before acceptance if it relates to a trade mark to which sub-section (1) of
section 9 and sub-sections (1) and (2) of section 11 apply, or in any other
case where it appears to him that it is expedient by reason of any exceptional
circumstances so to do.
(2) Where—
(a)
an application has been advertised before acceptance under sub-section
(1); or
(b)
after
advertisement of an application,-
(i)
an error
in the application has been corrected; or
(ii)
the application has been permitted to be amended under section 22,
the
Registrar may in his discretion cause the application to be advertised again or
in any case falling under clause (b) may, instead of causing the application to
be advertised again, notify in the prescribed manner the correction or
amendment made in the application.”
6.
A perusal of the above provision
shows that under Sec. 20(1), the mark can be advertised after acceptance or subject
to conditions and limitations. Historically, the Registrar of Trademarks used
to pass a specific order under Section 20(1) either accepting the mark or in
some cases, direct advertisement of the mark before acceptance. Marks were
advertised before acceptance only, in exceptional circumstances, when the
examiner has a doubt as to whether the marks ought to be accepted for
registration or not. This is because if a mark is advertised before acceptance
and thereafter during opposition or further proceedings, the mark is either
amended or corrected, it would require re-advertisement of the mark. This is in
line with
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11872/2005 Page 4 of 8
the
settled legal position as succinctly captured in Narayanan on Trade
Marks and
Passing Off, [Narayanan, P. (2004). Law
of Trade Marks and
Passing Off (6th ed.). Kolkata: Eastern Law House]. The ld. Author
observes
as under:
“5.24 Advertisement of application – s.20
and Rules 43-46
If the
applicant satisfactorily meets all the objections raised by the office, the
application will be advertised in the Trade Marks Journal, either as
accepted or before acceptance (s.20), on the applicant furnishing a
printing block, where necessary. An application may be advertised before
acceptance if it relates to a trade mark to which s. 9(1) and s. 11(1) and (2)
applies or in any other case where it appears that it is expedient by reason of
any exceptional circumstances so to do. Where the application has been
advertised before acceptance under the proviso to s. 20(1), the Registrar may
in his discretion cause the application to be advertised again.
Re-advertisement of the application may also be ordered where an error in the
application has been corrected or where the application has been amended under
s. 22 after its advertisement. In the alternative, the correction or the
amendment made in the application may be notified in the Trade Marks Journal in
the prescribed manner.”
7.
A similar view is expressed in Halsbury’s Laws of India, Vol. 20(1),
which opines as under:
“[185.834] Advertisement of application after acceptance
When an
application for registration of a trade mark has been accepted, whether
absolutely or subject to conditions or limitations, the Registrar will, as soon
as may be after acceptance, cause the application as accepted together with the
conditions or limitations, if any, subject to which it has been accepted, to be
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advertised in the prescribed manner.”
8.
Thus, it is not in every case
that a trade mark is advertised before acceptance. The said course of action
ought to be the exception and not the rule. If upon examination of a trade mark
application, the Registrar is of the view that the mark cannot proceed for
registration, then not every mark needs to be advertised. A mechanical
advertisement of marks even when it is clear that the same ought not to proceed
for registration, is contrary to the maintenance of the purity of the Register.
Thus, upon examination of a trade mark, as per the various applicable provisions
of the Act and the Rules, the Registrar of Trade Marks, inter alia, has the following options:
i.
Accept the mark unconditionally
and direct advertisement in the Trade Marks Journal;
ii.
Accept the mark subject to a
condition and direct advertisement in the Trade Marks Journal;
iii.
Accept the mark subject to a
limitation and direct advertisement in the Trade Marks Journal;
iv.
Direct the advertisement of the
mark in the Trade Marks Journal, before acceptance, if Section 9 or Section 11
is attracted or if exceptional circumstances exist or if it is considered
expedient to do so;
v.
Reject the application at that
stage itself if the Registrar is of the opinion that the same ought not to
proceed for registration due to any of the absolute prohibitions etc.,
9.
In recent times it is noticed,
that almost all the trademarks are being advertised before acceptance under the
Proviso to Section 20(1) of the Act.
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11872/2005 Page 6 of 8
Such a procedure would be contrary to the Act, inasmuch as there is
application of mind which is required to be exercised by the Registrar of
Trademarks, prior to the mark being advertised. Under Section 20(1), there has
to be a reason why the Registrar of Trademarks is directing `advertisement
before acceptance’ and the same cannot be a ministerial act or a mere
formality. The application of mind, prior to acceptance or advertisement before
acceptance, has to be deliberate and conscious and the provisions of the Act
would have to be considered by the Registrar in a conscious manner. Marks that
do not deserve advertisement ought not to be advertised before acceptance. The
automatic or indiscriminate advertisement of trade mark applications tends to
increase the burden upon the applicants to keep a watch on the Trade Marks
Journal and also to oppose, leading to heavy costs to maintain trademark rights
which are granted under the Act. Thus, it is not proper and is impermissible
for the Registrar of Trademarks to direct advertisement of a majority of marks,
before acceptance, under the proviso to Section 20(1) of the Act. A specific
order would have to be passed as to the reason why the mark is being advertised
after acceptance or the reason why the mark is being advertised before
acceptance. The order need not be detailed but ought to exist on file, even if,
very brief. The burden of the Registrar of Trademarks to examine marks as per
the provisions of the Act and Rules, cannot be completely shifted upon the
applicants/proprietors/owners of the trademarks. Such a procedure would result
in completely ignoring the provisions of Act itself, which is impermissible.
The Registrar has to maintain the purity of the Register.
10.
It is, accordingly, directed that
the Registrar of Trademarks shall ensure that whenever marks proceed for
advertisement, a specific brief order
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is passed under Section 20(1) after acceptance for advertisement or
under exceptional circumstances - under the proviso to Section 20(1) for
advertisement before acceptance. All marks ought not to be permitted to proceed
for advertisement and thereafter for registration.
11.
Under these circumstances, the
writ petition is disposed of with the following directions:
i.
The opposition, which is pending
in respect of trademark registration no. 1285292, shall now be decided
expeditiously.
ii.
Whenever any applications are
filed and consist of the word “PUJARI” especially in respect of Class 30, the
Registrar of Trademarks shall bear in mind the registrations of the Petitioner
and shall direct advertisement under Section 20 only after considering the said
trademark registrations of the Petitioner under either Section 20(1) or under
the Proviso to Section 20(1).
iii.
In case the mark is advertised,
the Petitioner’s right to oppose the mark would still be available and such
oppositions shall be decided in accordance with law.
12.
With these observations, the writ
petition and all pending applications are disposed of.
13.
The present order be communicated
to the Controller General of Patents, Designs and Trade Marks on the email address
cgoffice-mh@nic.in
PRATHIBA
M. SINGH
JUDGE
MARCH 03, 2020/dk/A.S.
(corrected
and released on 19th March,
2020)
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