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Whether it is the duty of registrar to ask for surcharge:

In September, 2017, Epsilon (petitioners/appellants) filed a writ petition before the Delhi High Court challenging the renewal of the respondent’s trademark “LOKPRIYA EASY NOTE”

In 2011, the repondents applied for renewal of their trademark and it was renewed in 2017 by the registrar and it was pending till 2017 and reason for delay was given as the slip-up by the registry whose attention went to it on 2017.

The appellants contended that under section 25(3) of the Trademarks Act, in case an application for renewal of a mark is made, after the expiration of registration of marks,  then such application must be accompanied by a surcharge and the respondents have not paid the surcharge, hence, renewal application cannot be processed.

The respondent contended that the payment of surcharge was made when the demand was made by the registry in 2017.

The Division Bench agreed with the respondent and opined that since the application for renewal was made before 2011 so there was no delay in filing of appliaction for renewal and it was the duty of the registry to inform the defendant about the payment of surcharge and thereby cure the deficiency.

As per Section 25(3) of the Trademarks Act r/w Rule 58 of the 2017 Rules, if the registry decides to remove the mark for non-payment of prescribed fees, then this removal has to be advertised. But in the present case the renewal application was not even scrutinised by the registry till 2017 and was pending till 2017.

Regarding Third Party Rights, the court observed that the renewal proceedings is between registrar and the proprietor of the mark and third party interest is to be considered only when the mark is removed from the register and an application if filed for restoration of the mark by the proprietor.

The appealant further argued that as per section 150 of the Trademark Act, the act of filing of a document is completed by the payment of the prescribed fee and in the present case, it completed in 2017 when the surcharge was paid and hence barred by time lapse.

Justice Bakhru observed that the non-completion of filing of document for the absence of payment of prescribed fee does not mean that the such filing are to be completely ignored and respondents are not entitled for a chance to cure the defect.

Delhi High Court’s Division Bench judgement gave a different perspective to the provisions regarding renewal of trademark.

Source: SPICYIP

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