ASHOK KUMAR SETHI Vs. REGISTRAR OF TRADE MARKS

JUDGEMENT

(1.) This appeal is directed against an order dtd. 24/3/2021 by which the request for renewal of Trade Mark No.728906 in Class 3 of the Register of Trade Marks was refused by citing the delay in the submission thereof.

(2.) The appellant applied for registration of the Trade Mark 'BLACK GOLD' in Class 3 on 2/9/1996, claiming user since 6/7/1993. The application was opposed by Mr.Ved Prakash Malhotra trading as M/s.S.P.Products (India) and such opposition was registered as Opposition No.720480. Upon hearing the applicant and the opponent, by order dtd. 31/1/2013, the opposition was rejected. Thereafter, the registration certificate was issued on 31/5/2017. Since such registration dated back to 2/9/1996 (date of application), the appellant filed renewal application in Form TM-R on 18/4/2018. A sum of Rs.18,000.00 was remitted as renewal fees. Pursuant thereto, a renewal certificate dtd. 22/4/2018 was issued for renewal of registration for a period of 10 years from 2/9/2006. The record reflects that a notice under Sec. 25(3) of the Trade Marks Act, 1999 (the Trade Marks Act) was issued by the Registrar of Trade Marks on 2/7/2018 informing the appellant that the registration would expire on 2/9/2016. Thereafter, the appellant, by communication dtd. 23/8/2018, called upon the Registrar of Trade Marks to renew the registration for the next block of 10 years from 2/9/2016 to 2/9/2026. This request was rejected by the impugned order.

(3.) Learned counsel for the appellant invited my attention to the order dtd. 31/1/2013 by which the opposition was rejected. She then pointed out that registration certificate dtd. 31/5/2017 appears to have been uploaded about 4 years later without communicating the same to the appellant. Once the appellant came to know of the registration certificate, the appellant endeavoured to renew the registration for 2 blocks of 10 years each by filing Form TM-R on 18/4/2018. According to learned counsel, the registration fee for online renewal is Rs.9,000.00 per renewal and, therefore, the aggregate renewal fee of Rs.18,000.00 was paid for renewal for 2 blocks of 10 years extending up to September 2026. Learned counsel submitted that the registration was renewed for the first block of 10 years from 2/9/2006 to 2/9/2016. As regards the second block of 10 years, she submitted that the request for renewal was not processed. Turning to the communication dtd. 2/7/2018, learned counsel submitted that such communication was not received by the appellant and was merely uploaded on the website. Upon coming to know of this communication, the appellant endeavoured to renew the registration from 2/9/2016 to 2/9/2026, but such request was refused under the impugned order. In these facts and circumstances, learned counsel contended that the impugned order is liable to be set aside.