Brief Order a must for ‘Advertisement before Acceptance’ of Trademark
HIGH COURT OF JUDICATURE AT DELHI
Jai Bhagwan Gupta
Registrar of Trademarks & Ors.
WP No. (C) 11872/2005 | 03.03.2020
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?
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.
(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,