The debate regarding strict interpretation of law versus a flexible approach is never ending. The supporters of the former believe that a strict interpretation allows little room for ambiguity, whereas the supporters of the latter are resolute that a flexible approach leans more towards just ruling in each case. The provisions of the Indian Trademarks Act, 1999 concerning timelines are strict; the filing of an application for renewal of a registered trade mark should be done within one year prior to the lapse of the period of registration of the Trade Mark, however if such an opportunity is missed, the proprietor has another opportunity to renew the Trade Mark upon payment of a surcharge amount within a period of six months from the lapse of the registration. If the mark is not renewed within these 6 months, it may be removed from the register. This removed mark maybe restored by filing an application along with the payment of restoration and renewal fees, within 1 year from the renewal date of the Trade Mark. The question before Delhi High Court in the case of M/s Epsilon Publishing House Pvt. Ltd. vs Union of India was, if the proprietor does not pay the surcharge amount while filing renewal application after the lapse of registration, will it amount to non-filing of the renewal at all?

Epsilon is the registered proprietor of the Trade Marks 'Easy Notes', 'Easy' and 'Epsilon' in class 16. It filed a suit for trade mark infringement against Mr. Jain for using the trade mark 'Lokpriya Easy Notes'. It was claimed by Mr. Jain that he was using the trade mark 'Lokpriya Easy Notes' since 1977 and his mark was registered from 2001. Therefore, as the registered proprietor he had the right to use the Trade Mark. Epsilon then filed a Writ Petition claiming that the renewal of the Trade Mark 'Lokpriya Easy Notes' was in contravention of the Trade Mark Rules. Epsilon's counsel submitted that after the lapse of the Trade Mark registration, only upon the payment of surcharge fees within 6 months, could the registration of the mark be continued. It was submitted that Mr. Jain filed an application for renewal, 17 days after the renewal was due, without payment of the surcharge fees. The non-payment of additional amount i.e. surcharge fees was noted by the Trade Mark Registry in the year 2017 i.e. almost 6 years later and was then notified to Mr. Jain. On receiving the notice, the error was rectified by Mr. Jain, by paying the surcharge fees due and the mark 'Lokpriya Easy Notes' continued to remain on the Register of Trade Marks. Epsilon raised an objection regarding the late payment of surcharge fees and stated that under Section 25 (3), the Registrar of Trade Marks could allow the trade mark to remain on the register only upon the payment of the surcharge fees. It was also argued that under Rule 66 of 2002 Rules (and 60 of 2017 rules) the Trade Mark Registrar should have provided an opportunity to Epsilon, to be heard as third party rights had arisen in the mark due to non-renewal of the Trade Mark by Mr. Jain.

The Court observed that, if the contentions of Epsilon's counsel were accepted, it would be contrary to Section 25(3) which allows for a grace period of 6 months from the expiry of the terms of registration. Although, the Registrar of Trade Marks is bound to follow the procedure laid down under the Act, if there is a delay on behalf of the Registrar, the proprietor of a Trade Mark should not be made to suffer. Therefore, the renewal of the registration was held to be correct. Furthermore, Rule 66 of the 2002 rules (interest of third party) is applicable when the Trade Mark in question is already removed from the Register and therefore, was not applicable in this case since the mark remained on the Register throughout. This decision sets a precedent which will be advantageous for proprietors of Trade Marks, who tend to suffer due to the delayed action of the Trade Marks Office, which is often because of the large backlog of applications that need to be attended to.

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