Intellectual Property RightsTrademark In IndiaBrief Order a must for ‘Advertisement before Acceptance’ of Trademark

HIGH COURT OF JUDICATURE AT DELHI

Jai Bhagwan Gupta

Versus

Registrar of Trademarks & Ors.

WP No. (C) 11872/2005 | 03.03.2020

FACTS 

In the present case, Mr. Jai Bhagwan Gupta (hereinafter referred to as “the Petitioner”), proprietor of M/s. Bhagwan Kirana Company had registered its trademark for the “JEERA PUJARI” (word mark) and “JAI PUJARI BRAND” (label mark) which have been duly renewed by the Petitioner.

However, despite the registered trademarks, the Registrar of Trademarks (hereinafter referred to as “the Respondent”) is advertising other trademarks which consist of the word “PUJARI” and fall under the category of identical goods in Class 30.

Thereafter, the Petitioner had filed an opposition in the Registry with respect to these marks issued but the same had become a burden upon him with respect to the cost of opposition filed and in keeping an eye on the trademark journal.

In light of the aforesaid, the Petitioner filed the present writ petition against the Respondents and has asked for the relief as follows:

“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.”

ISSUE BEFORE THE HIGH COURT

The following issue was considered by High Court of Delhi:

Whether the acceptance of trademark or advertisement before acceptance can be granted to trademarks which are similar to the already registered trademarks?

OBSERVATION 

The Petitioner relied upon Section 9 and Section 11 of the Trademarks Act, 1999 and submitted that the Respondent should examine the trademark applications in an efficient and proper manner in order to ensure that none of the marks which are brought before the Respondent are similar to that which are already registered and not clear for advertisement.

Additionally, the Petitioner’s registered trademark comprised of the work mark “PUJARI” which was for spices in Class 30 and similar trademarks under Class 30 has been given permission for advertisement for registration.

However, the Respondent placed reliance on the applications against which the Petitioner filed the opposition. The first application bearing no. 1188208 already stood abandoned and the other application bearing number 1285292 was still pending before the Respondent for the final registration.

Additionally, the Respondent submitted that the Petitioner has already availed the statutory remedy and is not entitled for filing the present petition or seeking any remedy under the same.

The Court analysed the submissions and observed that the whenever a trade mark is filed, the Registrar of Trademarks has an obligation to scrutinize the application as per Section 9 and Sec 11 of the Act which consists of Absolute grounds and Relative grounds for refusal of registration of trade mark respectively. The Registry has to examine all the applications as per the provisions of the Trademark Act, 1999.

Consequently, after examining the application for the trademark, the Registry can either accept the trade mark and advertise the same in the trademark journal or may without accepting the trademark, advertise it before acknowledging its acceptance as per the proviso of Section 20(1) of the Act.

Section 20 of the Act stipulates as under:

“20. Advertisement of application: (1) When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or 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,-

• an error in the application has been corrected; or
• 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.”

The Court further observed that the Respondent has been following the practice of passing a specific order regarding either accepting the trademark or allowing advertisement of trademark before acceptance in cases where there exists a doubt with regard to whether a particular trademark should be accepted or not.

The practice was followed with the opinion which was briefly marked in Narayanan on Trade Marks and Passing Off, [Narayanan, P. (2004). Law of Trade Marks and Passing Off (6th ed.). Kolkata: Eastern Law House] as follows:

“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.”

The court further expressed that similar thoughts were cited in Halsbury’s Laws of India, Vol. 20(1) which were as follows:

“[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 advertised in the prescribed manner.”

CONCLUSION 

Thus, the Court held that the action has to be performed in exceptional circumstances and not every trademark is advertised before acceptance. Upon scrutiny of trademark and as per various provisions applicable, the Respondent has the following options available whenever a trade mark application is produced before it:

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.

Although it has been noticed that in recent times, a number of trademarks are advertised before acceptance under the Proviso of Section 20 (1) of the Act. Such practice is contrary to the law of the land.

Therefore, the Court held that:

“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 Registrar should apply all the provisions along with a deliberate and conscious application of mind before granting the advertisement to trademark prior to its acceptance and held that:

“Thus, as per court, 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.”

Therefore, the Court directed that the Respondent shall ensure that whenever marks proceed for advertisement, a specific brief order is passed under Section 20(1) after acceptance for advertisement or under exceptional circumstances, in view of proviso to Section 20(1) for advertisement before acceptance. All marks ought not to be permitted to proceed for advertisement and thereafter for registration.

The Court, thus disposed the present petition and held that:

“1. The opposition, which is pending in respect of trademark registration no. 1285292, shall now be decided expeditiously.

2. 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).

3. 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.

4. With these observations, the writ petition and all pending applications are disposed of.”

AMLEGALS REMARKS 

In the present case, the Court has suitably issued directions to the Trademark Registry as the number of grants of advertisement to the trademark before acceptance is increasing. It is pertinent to look into the fact that the Registrar of Trademark has the obligation to scrutinize the trademark before granting advertisement/acceptance and such burden cannot be shifted to the applicants.

Any such procedure which is neglecting the provisions of the Act is completely contrary and impermissible in nature. Therefore, the Court appropriately held that:

“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.”

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