Procedure not to bar right to renew trademark

Under the Trade Marks Act, 1999, within one year from the expiry of a trademark, the registered proprietor can save the mark from removal from the Trade Marks Register by paying the renewal fee along with a surcharge fee (within six months from the date of expiration) or restoration fee (after six months but within one year from the date of expiration). However, sometimes such renewal requests become contentious and result in litigation. In the recent case of M/S Epsilon Publishing House Pvt Ltd v Union of India & Ors, a division bench of Delhi High Court upheld the decision of Justice Vibhu Bakhru, which was based on his in-depth analysis of the provisions relating to renewal and restoration of a registered trademark.

In this case, the dispute was between Epsilon Publishing House, owner of the trademark Easy Notes, and Pardeep Kumar Jain, owner of the trademark Lokpriya Easy Notes, both registered in class 16. Jain’s mark was due for renewal in 2011. The application for renewal, which was filed a few days after the expiry of the registration, was processed by the Trade Marks Registry and allowed after a gap of six years, in 2017.

Naman Jain is an associate at LexOrbis.