Asianet Star Communications Pvt Ltd. Vs.the Registrar of Trademarks & Anr. - Court Judgment

$~2, 3 and 30 * IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision:-

"5th December, 2019 + W.P.(C) 10040/2019 and CM APPL. 41542/2019, 52388/2019 M/S B.E.C. INDUSTRIES ........ Petitioner

Through: Mr. Neeraj Grover, Mr. Rudrartti and Ms. Avani Kapoor, Kaur Advocates (M:

98103. 6869). UNION OF INDIA versus ..... Respondent Through: Mr. Akshay Makhija, CGSC with Ms. Nidhi Prashar, GP and Ms. Seerat Deep Singh, Advocates for UOI (M:

98100. 9901). 3 + W.P.(C) 11284/2019 and CM APPL. 46493/2019 WITH30+ ASIANET STAR COMMUNICATIONS PVT LTD. ........ Petitioner

Through: Mr. Saikrishna Rajagopal, Mr. Nitin Sharma, Mr. Sumant Narang, Mr. Abhiti Vacher & Mr. Vivek Ayyagari, Advocates (M-8017571175). THE REGISTRAR OF TRADEMARKS & ANR. ........ RESPONDENTS

versus Through: Mr. Gaurang Kanth, CGSC with Mr. Hemant Kumar, Sr. Examiner TM and Mr. Anil Awasthi, NIC (M- 9999285585). KISHORE KUMAR ........ Petitioner

W.P.(C) 2325/2010 AND Through: Mr. Rahul Vidhani, Advocate (M:

98115. 5888). UNION OF INDIA Versus ........ RESPONDENTS

Through: Mr. Gaurang Kanth, CGSC with Mr. Hemant Kumar, Sr. Examiner TM and Mr. Anil Awasthi, NIC (M- 9999285585). W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 1 of 6 CORAM: JUSTICE PRATHIBA M. SINGH PRATHIBA M. SINGH (Oral) In W.P.(C) 11284/2019, on the last date i.e. 31st October, 2019 owing 1. to various technical glitches which had been revealed in the issuance and processing of various forms filed during prosecution of a trademark application, certain directions were issued which read as under: of applications trade mark “6. In order to obviate the recurrence of such situations in the future, which have clearly become endemic in the Trade Mark Registry, a proper procedure is required to be established for the processing and registrations. Accordingly, the Registrar of Trade Marks shall place on record an affidavit of Mr. Hoshiar Singh, the Head of the Trade Marks Registry Office, Delhi, detailing the following aspects: i) the current procedure for processing of trade mark applications, including the various steps starting from filing, acceptance of fee, allocation of application number, examination and generation of examination report, acceptance of responses, hearings held, if any, orders passed on the said files, grant of trade mark registration certificates, change of address, change of name, processing of licences and assignments, renewal notices, etc. and whether they are dealt with by one officer or by different departments, even if they relate to same application. The same may be explained by means of a flow chart; ii) the manner and procedure for uploading of documents which is currently being followed at each and every stage by the Trade Marks Registry; iii) whether it is considered efficient to allocate a particular trade mark application to a specific officer who would then process the various forms filed in respect of that application so that the familiarity of the W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 2 of 6 officer with the file would enable efficient processing of the same; iv) insofar as post-registration formalities, such as renewals, assignments, etc. are concerned, whether the same should be dealt with by a separate department and if so whether post registration formalities of specific registered trade marks ought to be handled by a single officer.

7. The above be placed in the form of an affidavit so that this Court may consider passing appropriate directions for streamlining of the processing of trade mark applications on the next date of hearing.

8. Insofar as the... Petitioner

’s application is concerned, since the Registry has, in paragraph 10 above, stated that they are willing to process the renewal of the trade mark, it is directed that the said process be undertaken and the renewal certificate be issued to the... Petitioner

.

9. The official dispatch register which was shown to the Court has been returned to the ld. counsel for the Respondent. the National 10. Informatics Centre and a senior officer from the Trade Mark Registry, Delhi who is familiar with the affidavit to be submitted to the Court, shall remain present in Court on the next date of hearing.” technical person A from 2. Pursuant to the above directions, Mr. Hemant Kumar, Sr. Examiner from the Trade Marks Registry, Delhi is present along with Mr. Anil Awasthi Technical Director, NIC. Ld. standing counsels appearing for the Union of India have submitted that they have sought certain instructions on the current manner in which trademark applications are being processed, however, the instructions in respect of the directions passed above are yet to be received. A flow chart has been handed over which shows the current procedure adopted by the Trademark Registry in processing trademark W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 3 of 6 application. The said flow chart is set out herein below:

3. A perusal of the above shows that, currently, all the trademark applications filed in the five different offices at Ahmedabad, Bombay, Calcutta, Chennai and Delhi are all initially transmitted to the Trade Marks Registry in Mumbai, from where the publication takes place and thereafter the application proceeds for registration, if there is no opposition. However, whenever there are objections raised by the Examiner, the same are then transmitted to their respective branch offices. Show-cause hearings are held in the branch offices. If oppositions are filed, they are heard at the branch offices and then further procedure is undertaken. The flow chart actually reveals that there is enormous confusion in the manner in which trademark applications are dealt with inasmuch as the transmission to the Mumbai office becomes quite cumbersome as invariably in most trademark W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 4 of 6 applications, objections are raised by the Examiner. The manner in which the processing is done, once the application is received in respect of the various forms that are filed by the Applicant has also not been explained. The Trade Marks Registry is accordingly directed to file a better affidavit and Mr. Hoshiar Singh, Head of the Trade Marks Registry, Delhi is directed to remain present on the next date to explain the said affidavit.

4. The purpose of passing the above directions as contained in order dated 31st October, 2019 was to ensure that the various forms which are filed by the applicants are processed in a chronological manner and preferably by one officer/one desk in order to ensure that there is no lack of co-ordination in the various steps that are undertaken in the processing of the same. For example, if there is a change of address form that is filed, sending of a renewal notice to the old address results in non-receipt of the renewal notice and hence abandonment leading to valuable rights being lost of the Applicant. There are several such illustrations that can be cited which lean in favour of handling of one application preferably by one officer/desk instead of different departments handling different forms in relation to the same application.

5. The present order be communicated to Mr. O.P. Gupta, the Controller of Patents, Designs and Trade Marks in order to ensure that he personally looks into the matter and a proper affidavit is filed by the Trade Marks Registry to explain the manner in which the aforesaid can be achieved.

6. Prior to filing the said affidavit, it is directed that members of the Associations of Trademark practitioners, namely, APAA, AIPPI, IPAA and IPLPA and any other practitioners/stakeholders who wish to give suggestions be given a hearing, by the Controller in order to ensure that the W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 5 of 6 views of all the practitioners are also ascertained and a comprehensive affidavit shall be filed. At the said meeting, the Technical Director, NIC shall ensure that he personally or a senior official from the NIC is present in order to address the technical issues that may be raised in the said meetings. The meetings shall be conducted in the month of December. The first meeting at Delhi will take place on 11th December, 2019. The Controller can on the day of the said meeting announce the dates for the remaining two meetings to be held in Mumbai and Chennai. The Associations shall be intimated about the said dates by the Controller.

7. After holding the said meetings, an affidavit shall be filed in terms of the last order and the present order at least five days before the next date. Advance copies of the affidavit shall be served upon ld. counsels for the... Petitioner

s. The Associations of IPR practitioners mentioned above, are permitted to intervene in the present matter. Ld. Counsels appearing for the... Petitioner

s assure the Court that the order passed today shall be communicated to the Associations mentioned above. A notice shall be put up on the website of the Trade Marks Registry for inviting suggestions from practitioners and other stakeholders so that the various technical problems and procedural issues faced can also be submitted online to the ld. Controller.

8. This is a part heard matter. List for further hearing on 13th January, 2020 at 3.30pm.

9. Order dasti under signature of the Court Master. PRATHIBA M. SINGH JUDGE DECEMBER05 2019/MR W.P.(C)s 10040/2019,11284/2019 & 2325/2010 Page 6 of 6