Allowed

M/S Hi-Tech Products Private Limited v. Union of India and Ors.

Delhi HC10 Feb 2020W.P.(C)/1539/2020

Case brief

AI extract

What is this about?

This petition challenged an order treating trademark assignment requests as abandoned due to alleged non-response to a notice from the Trademark Registry. The Court observed that replies were factually filed and uploaded online, finding the Registry's order erroneous. The impugned order was set aside, and the matter was remanded for fresh consideration.

What did the court decide?

The impugned order dated 24 October 2019 is set aside. The Trademark Registry is directed to take a fresh decision on the Forms TM-24 after hearing the petitioner.

M/S Hi-Tech Products Private Limited Vs Union of India… — Intellectual Property | Delhi HC (2020)

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$~41

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IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 10^th February, 2020

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- W.P.(C) 1539/2020 M/S HI-TECH PRODUCTS PRIVATE LIMITED ..... Petitioner Through: Mr. Sudershan K. Bansal, Mr. Pankaj Kumar and Mr. Kapil Kr. Giri, Advocates. (M:9810438450)

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versus

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UNION OF INDIA AND ORS. ..... Respondents Through: Mr. Bakshi, Mr. Akshya and Mr. Rehalla, Advocates for R-1 to 3. (M:989195990)

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CORAM:

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JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J.(Oral)

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CM APPL. 5376/2020(Exem)

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Allowed, subject to all just exceptions. Application is disposed of.

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W.P.(C) 1539/2020, CM APPL. 5374/2020 & 5375/2020

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The present petition has been filed challenging the impugned order dated 24^th October, 2019 passed by the Examiner of Trademarks, by which various applications under Form TM 24 in respect of Trademark Registration No. 324220 have been treated as disposed of. Ld. counsel for the Petitioner submits that notice dated 16^th September, 2019 issued by the Registry was in fact replied to by the Petitioner on 19^th October, 2019. However, the Registry has proceeded on the premise that no response was in fact filed and has disposed of the applications without either allowing or rejecting the assignments.

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The background of this petition is that the trademark FALCON was granted registration vide registration No. 324220 in Class 09 on 31^st March, 1977. The same was registered in the name of the partnership firm Goel

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Page 1 of 5

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W.P.(C) 1539/2020

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Industries. The said partnership firm is stated to have been dissolved on 31^st March, 1985. Subsequently, various assignment requests were filed on 26^th February, 1990, 30^th April, 1999, and 21^st March, 2007. Notice was issued by the Trade Marks Registry (TMR) on 6^th September, 2012 to the following effect:

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“ To:

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Dated: Thursday, September 06,2012

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LOGIC TRADE MARK COMPANY 96, SUKHDEV VIHAR, MATHURA ROAD, NEW DELHI-110 025.

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Subject:

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Request on Form No: TM-24 in respect of Registered TradeMark No.: 324220 in Class: 9 dated: 3/21/2007 in the name of M/s. MANGI LAL

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Sir,

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With reference to the above your attention is invited to the following paragraphs:

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1. That as per the records of the Trademarks Registry aforsaid trade mark stands registered in in the name of MANGILAL, whereas the assignment deed has been executed by VISHAL GUPTA (assignors/transferor). You should explain the discrepancy.

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2. You should file an affidavit to the effect of these that no proceddings are pending relating to the subject trade mark in any Court of Law or tribunal. In case any such proceddings are pending, please enclose the details and also details of any order(including interim) passed by the Court of tribunal.

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You are requested to comply with the above requirements within 30 days.The matter shall be reexamined further on compliance of above request.”

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The same is stated to have been replied to by the Petitioner on 26^th September, 2012. The request however, continued to remain pending

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W.P.(C) 1539/2020

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despite various hearing notices having been issued. A further notice was received on 16^th September, 2019, which reads as under:

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“To:

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Dated: September 2019

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LOGIC TRADE MARK COMPANY 96, SUKHDEV VIHAR, MATHURA ROAD, NEW DELHI-110 025.

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Subject:

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Request on Form_No.: TM-24 in respect of Registered TradeMark No.: 324220 in Class:9 dated: 21/03/2007 in the name of M/s. MANGI LAL

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Sir,

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With reference to the above your attention is invited to the following paragraphs:

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1. That as per the records of the Trademarks Registry aforsaid trade mark stands registered in the name of MANGILAL, whereas the assignment deed has been executed by VISHAL GUPTA (assignors/transferor). You should explain the discrepancy.

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3. You are requested to submit your reply for the above / or required documents if any at e-mail [email protected]

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You are requested to comply with the above requirements within 30 days. The matter shall be reexamined further on compliance of above request. If no reply is received within above mentioned stipulated time, the request shall be treated to have been abandoned for lack of prosecution u/s 132 of Trade Marks Act, 1999.”

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W.P.(C) 1539/2020

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This was again replied to by the Petitioner on 19^th October, 2019. However, without taking any of the responses into consideration, the impugned order appears to have been passed stating that no response was filed by the Petitioner. The impugned order reads:

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“ To:

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Dated: 24 October 2019 LOGIC TRADE MARK COMPANY 96, SUKHDEV VIHAR, MATHURA ROAD, NEW DELHI110 025 Subject: Request on Form No: TM-24 in respect of Registered TradeMark No.: 324220 in Class: 9 dated 21/03/2007 in the name of M/s. MANGI LAL Sir,

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With reference to the above your attention is invited to the following paragraphs:

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1. Trademark request likely to be removed due to non response of office correspondence dated 16 September 2019 in prescribed time limit, hence treated as disposed off.”

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Ld. counsel appearing for the Petitioner, Mr. Sudershan K. Bansal submits that the response was filed on both occasions, however, the Registry has not taken the same into consideration and has erroneously disposed of the same. Ld. standing counsel appearing for the Union of India, submits that he wishes to seek instructions from the Department as to whether the response was in fact received.

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With the modernisation in the Trademark Registry, the records of the Registry are now available online. Ld. counsel for the Petitioner has produced an electronic copy of the online record which shows that the response dated 19^th October, 2019 was in fact uploaded on the website of the Registry. This Court has also verified the same from the online status on the

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W.P.(C) 1539/2020

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website http://ipindiaonline.gov.in, by accessing the same in the Court, which shows that the letter dated 19^th October, 2019 has been submitted by the Petitioner. Under such circumstances, there was no occasion for the Trademark Registry to dispose of the request for assignment by simply recording that no response was filed. It is clear that the Examiner who has issued the order dated 24^th October, 2019 has not even conducted a basic search of the online record. Moreover, the uploading date of the letter dated 19^th October, 2019 is shown as 21^st October, 2019 on the online status. The impugned order, which has been issued on 24^th October, 2019 does not take into consideration the letter uploaded on 21^st October, 2019, which clearly is an error. The subsequent representation of the Petitioner dated 20^th November, 2019 has also gone unanswered.

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The impugned order dated 24^th October, 2019 is accordingly set aside. The Trademark Registry is now directed to take a fresh decision on the Forms TM – 24 and any other accompanying requests filed by the Petitioner. The assignment requests shall be processed in accordance with law. If any further documents are required from the Petitioner, the Petitioner shall be called upon to submit the same. This Court has not examined the merits of the Forms TM - 24 submitted by the Petitioner and whether or not they satisfy all the requirements. The Registry to pass a fresh order after hearing the Petitioner.

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The petition is allowed in the above terms. The petition and all pending applications are disposed of.

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PRATHIBA M. SINGH

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JUDGE

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FEBRUARY 10, 2020/ dj

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W.P.(C) 1539/2020

M/S Hi-Tech Products Private Limited v. Union of India and Ors.

Case brief

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M/S Hi-Tech Products Private Limited v. Union of India and Ors.

Case brief

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