Earlier today, a Delhi appeals court in Eplison Publishing House v. Union of India rejected an interesting petition on trademark renewal procedure under the Indian Trade Marks Act.
The Claim
At the root of this claim is a commercial dispute between Epsilon (the Petitioners) and Jain (the Respondents) over the ‘EASY NOTES’ trademark, which is popular in Indian stationery circles. Jain’s trademark registration dated back to 2007, and Epsilon’s to 2010. Epsilon’s efforts to capture rights over the trademark had also seen it file suit in Kanpur in 2015.
The question before the appeals court, however, concerns Jain’s application for renewal of its trademark registration. The registration ran out in May 2011. Epsilon’s objection was that, since the Jain’s renewal was filed without a statutorily prescribed surcharge on the renewal fee, its registration ought to be invalidated.
In September 2017, Mr Justice Bakhru had ruled against Epsilon on this question. The ruling set up this appeal.
Trademark Renewal Procedure under the Trade Marks Act
Renewal timelines under the Trade Marks Act are governed, in the first instance, by Sections 25(3) and (4). Taken together, these provisions permit the rightsholder to renew before the 10-year renewal date by paying a renewal fee after an initial notice by the Registrar, or within 6 months from the 10-year date, by paying the renewal fee plus a surcharge, or after 6 months but within 12 months from the 10-year date, by paying the renewal fee plus a surcharge, if the Registrar is “satisfied that it is just” to permit the renewal.
Should the rightsholder falter at these stages, the Registrar is also bound to issue notice of defects on any procedural compliance and to advertise the removal of the registration [under Rules 59 and 60 of the 2017 Rules, read over Sections 25(3) and (4)].
Set against this fairly linear procedure, the factual before this court is decidedly not so. There was no initial notice by the Registrar, Jain’s renewal was not within the 10-year date but was within the 6 months thereafter, it was accompanied by the renewal fee but not the surcharge. The Registrar made no defects communications and, importantly, did not advertise the removal.
Mr Justice Bakhru had approached this from the standpoint that, owing to the Registrar’s a priori oversights, Jain could not be penalised with the consequence of non-renewal for less egregious procedural mistakes. He used this to confirm Jain’s renewal application.
[Epsilon had also argued, slightly disagreeably, that, in order for the 6-month extension for renewal to be valid, it needed to be triggered by the rightsholder within the 10-year limitation, and not after. It is unlikely that this is true, for it would heavily devalue the proviso to Section 25(3) if it was. The appeals court does not return a finding on this.]
However, Mr Justice Bakhru went a step further.
He opted to close Epsilon’s interference in a case of this nature altogether, reasoning that renewal is between the Registrar and the rightsholder inter se.
This is a proposition worth considering. Rule 60 specifically requires the Registrar to account for “the interest of other affected persons” on issues of “restoration and renewal”. Mr Justice Bakhru’s ruling that these representations by affected persons — such as Epsilon here — were only relevant after the removal is, therefore, not free from controversy.
Section 150(3)
However, Epsilon’s other contention, raised exclusively on appeal, survives Mr Justice Bakhru’s finding.
Epsilon argued that, under Section 150(3) of the Act, a fee or surcharge on a Registry filing controls the date of the filing itself. Therefore, since the surcharge in this case was not paid by Jain until April 2017 (deep into this dispute, after the Registrar had belatedly issued notice on the surcharge discrepancy), it had the effect of dragging the filing forward from its original filing date in May 2011 (a few days after the 6-month window).
On the strict letter of the law, the argument is a winner. The appeals court notices as much. “The text of Section 150 seems to suggest that if a fee is prescribed for the doing of a thing or for submission of an application,” says Mr Justice Bhat, “the absence of such fee would result in the application being treated as having not been filed.”
“At the same time,” he continues, “[this] court is cognizant of the fact that the application was made [in May 2011], i.e. within a 6-month period. The defect, as it were, with respect to the surcharge shortage, came to the notice of the [Registry] in 2017, when notice was issued in that regard.”
This is well and good. What does it do to the date of filing in law, though?
“It would also be worthwhile noticing that the new [Trade Marks] Rules came into effect [in June 2017]. Furthermore, the basic grounds for challenge of the trademark registration, i.e. in the pleadings in the [cancellation proceedings initiated by Epsilon against Jain] right upto 2015, were not that the registration had lapsed. It was on the basis that the [trademark] was misleading. The Court also notes that the suit alleging infringement was filed only in 2015, i.e. much after Jain’s rectification application.”
All together, now: none of this has anything to do with the date of the filing being dragged back to 2017 on account of the non-payment of the surcharge.
The appeals court’s response here points to a filing without an incomplete fee (which Section 150 is specifically focused on delegitimizing), the defect belatedly coming to the Registry’s notice (which has nothing to do with altering the statutory deadline, which resides in Section 25 and Rules 59 and 60), a new set of Trade Marks Rules coming into effect in the interregnum (which is irrelevant here since the old Rules provide exactly the same timelines), an alternate case made by Epsilon at cancellation (which are circumstances subsequent to, and therefore immaterial to, a registration that has not been correctly renewed in the first place) and the timing of the infringement suit (ditto).
Is there anything in the language of Section 150 itself that can be read over the facts to invalidate Epsilon’s objection? “Where a fee is payable in respect of the filing of a document at the Trade Marks Registry,” runs Section 150(3), “the document shall be deemed not to have been filed at the Registry, until the fee has been paid.”
Small Injustices
It is hard to overwrite this provision with language cleaner than that. Therefore, the feeling that Epsilon has been hard done by here must persist. To be sure, considering the Section 150 angle was not addressed to Mr Justice Bakhru at the first instance and the fairly muddy game of subterfuge that was played in the written claims at the cancellation proceedings, it is not an especially deep feeling.
Yet, there is an old saying about no injustice being too small which is not inconsiderable in its resonance as I put a bow on Epsilon v. Union of India.
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