Kishore Kumar v. Union of India

order shall be dispatched to the respective parties by e-mail within a week after it is passed. Display board of hearing matters, Scheduling of hearing be done slot-wise to avoid the long waiting for hearing Accepted, and will be implemented w.e.f. 01/04/2019. -- Same as 9 above-- Multi class search facility be provided. The present system is having its limitation and this sort of changes may not be possible in the same. However, it is further informed that this requirement will be available in new eTMR. Let the same be implemented in the new e-TMR system.

Display of Hearing Board related to show cause hearing in Advance. Show-Cause hearing scheduled in bulk and the same is divided among the present authorised hearing officer for the purpose. In case hearing officer take leave then with a view to avoid inconvenience to the parties, hearing officer wise board decided by system on the same day. However, Slotting of the matter in to two parts i.e. pre-lunch and post lunch is under consolidation. --Same as 9 above-- Processing of Registered user request on TM-U, Partial Assignment. At present there is no such module exist for processing of such request, however same will be come in existence with implementation of eTMR. Let the same be implemented in the new e-TMR system. FAQ be updated The office is in process to update the same and updated version will uploaded at official website shortly. No directions required. Request for dispatch of Physical copy of Registration certificate. In view of the making office environment friendly, we stared reducing the use of papers. A policy decision is taken to shift on issuance of digital registration certificate. Applicant can always print a physical copy. Let the digital registration certificates be uploaded within three months from the date when the period for filing the notice of opposition expires, if no opposition is filed.

Some suggestion received in regard to processing of TM-P and branch by single officer. It may be noted that processing of post registration amendment required is done as such, all request related to single application processed by the same officer. The office is committed to dilute the pendency in this area and dispose such request within three month from the date of filing. It is further clarified that hearing, if required, is provided at the branch under which jurisdiction the original application filed. However normal processing is done by which officers or at which location should not be area of concern to the applicant. W.e.f. 30th April 2020, all forms filed post-registration i.e., TM-P's ought to be processed by the same officer. O-3 and RG-3 notices ought not to be issued till the pending TM-P's are disposed of, as stated in the affidavit of the Deputy Registrar dated 6th March, 2020, the relevant portion of which reads as under: - "I state that to avoid discrepancy in issuance of O-3/ RG-3 notices during the pendency of TM-P's, the Registry will implement a system wherein O-3/RG-3 notices will not be issued unless the pending TM-P's are disposed of by the officer concerned. The same will be implemented in the new e-TMR system which is expected to be implemented by the end of this year."

Early publication of the Annual report. It is inform to the stakeholders that Annual Report is published after the approval of the competent authority and placement in the parliament only. However, possible measure may be taken to reduce delay in future. No directions required. GI should not be registered as TM. There is Statutory provision for restriction of registration of TM of registered GI. However, if some discrepancy noted specifically, may be brought is the knowledge of the office. No directions required. Request made to avoid discrepancy in regard to filing of letter / correspondence. It was inform to the stakeholder that specific nomenclature is given for speedy allotment or processing of application such as reply to examination report, reply to formality check fail, etc. Everyone should take proper care to file the document properly. However, in some specific cases, office may be consulted, if required. No directions required.

"Note 1: Some suggestion received relating to structural changes in the system, such as visibility of classes of opposition in case of multiclass application, display of email ID in opposition BAR, image search, multiclass search, display of daily order sheet, etc. will be considered at the time of implementation of new eTMR system as the office is in process to finalize and implement new eTMR system for electronic processing in near future.

Due consultation/testing will also be done with representative of associations before implementation of the same.

Note 2: Some general queries rose without any suggestion in this regard. It is to inform that FAQ document will be updated shortly covering all such queries."

¶16A perusal of these affidavits and the tabulation above, shows that several suggestions made by the stakeholders have already been agreed to by the Registrar of Trade Marks. Further, insofar as the processing of Trade Mark applications by the same officer is concerned, form TM-Ms are to be processed by the same officer. The table above consists broadly of two categories of directions which are to be implemented. Some are to be implemented w.e.f. 30th April 2020. Steps shall also be taken by TMR to ensure implementation as directed. It has been further submitted on behalf of the Registrar of Trade Marks that a new e-TMR system is likely to be established and put into motion by December, 2020. Let the needful be accordingly done for implementing the e-TMR system as contemplated and the various suggestions and directions in respect thereof as contained in the table above be implemented in the said system.

¶17As per Mr. Pawan Kumar Pandey, pendency in the Trade Mark application process has reduced. All the measures taken by the Registrar of Trade Marks are taken on record and the TMR is directed to adhere to the statements made in the affidavits filed before this Court.

¶18Since the processing and setting up of more efficient measures, as part of the e-TMR system, is an on-going process, till the same is fully implemented, the Petitioners/any other stakeholders are permitted to submit any further suggestions to the Registrar of Trade Marks within a period of

six weeks from today for being considered for implementation in the e-TMR system, in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.

¶19Ld. counsel submit that the Trade Marks insofar as the present writ petitions are concerned, in W.P.(C) 10040/2019 and W.P.(C) 11284/2019 the same have been renewed. If renewal of the Trade Mark in W.P.(C) 2325/2010 is pending, let the same be processed within a period of eight weeks and the renewal certificate be granted. No further orders are called for in these writ petitions.

¶20With these observations, the petitions and all pending applications are disposed of.

PRATHIBA M. SINGH

JUDGE MARCH 06, 2020 dj/MR/T

(Corrected and released on 19th March, 2020)

* IN THE HIGH COURT OF DELHI AT NEW DELHI Date of decision: 6th March, 2020 + W.P.(C) 2325/2010 KISHORE KUMAR ..... Petitioner Through: Mr. Neeraj Grover and Mr. Rohan Yadav, Advocates. versus UNION OF INDIA ..... Respondent Through: Mr. Gaurang Kanth, CGSC with Mrs. Biji Rajesh and Ms. Eshita, Advocates. (M:9999285585) WITH + W.P.(C) 10040/2019 & CM APPLS. 41542/2019, 52388/2019 M/S B.E.C. INDUSTRIES ..... Petitioner Through: Mr. Neeraj Grover, Ms. Avani Kapoor, Mr. Rudratti and Mr. Rohan Yadav, Advocates. versus UNION OF INDIA ..... Respondent Through: Mr. Akshay Makhija, CGSC with Ms. Nidhi Mohan Parashar, Govt. Pleader, Ms. Roshni, Mr. Shiram, Advocate. (M:9953899908) along with Mr. Pawan Kumar Pandey, WITH + W.P.(C) 11284/2019 & CM APPL. 46493/2019 ASIANET STAR COMMUNICATIONS PVT LTD...... Petitioner Through: Mr. Sumant Narang, Advocate. (M:9810621272) versus THE REGISTRAR OF TRADEMARKS & ANR. ..... Respondent Through: Mr. Gaurang Kanth, CGSC with Mrs. Biji Rajesh and Ms. Eshita, Advocates. CORAM: JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J. (Oral) W. P. (C) 2325/2010 1. The Petitioner was the proprietor of the registered trade mark "HOMELITE" in Class 9 bearing No. 771268. The application for registration of the trade mark was filed on 6th October, 1997 and the registration certificate was issued to the Petitioner on 23rd March, 2006. Sometime in August, 2009, the Petitioner applied for renewal of the trade mark under TM-12 and TM-13. However, a letter was issued by the Registrar of Trade Marks to the effect that the renewal fee had not been paid within the prescribed time and hence, the mark is likely to be removed. The same was replied to by the Petitioner's counsel vide letter dated 21st December, 2009, wherein it was informed that no form O-3 notice had been received by the Petitioner and hence, the mark could not be removed. The Petitioner was also willing to file form TM-56 for renewal/restoration along with any penalty. The status on the Trade Marks Registry's (hereinafter, "TMR") website showed the trade mark as 'abandoned'. Hence, the writ petition. W. P. (C) 10040/2019 2. The order dated 17th September, 2019 records the factual background to this petition as follows: "2. The Petitioner is the owner and registered proprietor of trademark bearing No. 278366 in class 9 for the mark "B.E.C. (logo)". The said mark was applied for in the year 1972 and was registered in 1978. The same was last renewed for a period of 10 years from 16th February, 2007. The next renewal had to be done prior to 16th February, 2017. The Petitioner's case is that it did not receive any notice for renewal and accordingly, it could also not apply for renewal as the counsel dealing with the matter had passed away and there was some miscommunication. 3. Sometime in August, 2019, the Petitioner, while sending its registration to a proposed joint venture partner realised that the same was not renewed. It therefore approached a trademark attorney and tried to deposit the renewal fee, however, it noticed an online notice uploaded as O-3 notice on the trademark registry's website. A screenshot of the same has been placed on page 34 of the petition. Ld. counsel submits that when the said O-3 notice was opened for viewing, the same was shown as form RG- 3, purportedly dated 2nd November, 2016. 4. The submission of Mr. Neeraj Grover, ld. counsel is that form RG-3 was, in fact, a new form which was introduced only with the notification of the trademarks rules in 2017, with effect from 6th March, 2017. Thus, he submits that it is surprising that the notice dated 2nd November, 2016 is called form RG-3. According to him, it is clear that the form O-3 notice was never dispatched and accordingly, the Petitioner ought to be permitted to renew his trademark. 5. Ld. Counsel appearing on behalf of the Respondent submits that she has been served with an advance copy and seeks time for taking instructions. 6. A perusal of the website screenshots shows that the