The Delhi High Court has recently ordered the Registrar of Trade Marks to explain as to how O-3 notice was uploaded on the website of IP India in a backdated manner. An O-3 notice is sent to the registered proprietor of a trademark as a reminder before the expiry of a trademark’s validity under Section 25(3) of the Trade Marks Act, 1999.
The petition was filed by Asianet Star Communications Pvt. Ltd. The order has been passed by a Single Judge Bench of Justice Prathiba M Singh.
The petitioner stated that the O-3 notice for the renewal of the trademark was not issued by the Registrar of Trade Marks. The petitioner asserted that when it checked the website of the Trademark Registry around June 20th, 2019, no O-3 notice in respect of its trademark was uploaded on the website. Thereafter, the petitioner applied for renewal, along with the past fee/penalty.
On July 30th 2019 the petitioner found out that O-3 notice is uploaded on the website with the heading “Form RG-3”. The notice was uploaded from backdate i.e. September 05, 2016. The petitioner thus contended that the O-3 notice was never issued and the mark ought not to be treated as abandoned.
The Registrar of Trade Marks argued that the O-3 notices were sent on September 12, 2016, to the petitioner to their postal address.
The Court remarked that the Registrar of Trademarks will explain as to how the back dated O-3 has been issued. Moreover, the explanation as to why the O-3 notices were uploaded as “Form RG-3”.
The Examiner who signed the petitioner the RG-3 form is directed to file a personal affidavit stating the reason as to this particular form was uploaded and in what manner it was communicated to the petitioner, along with the relevant documents to support the uploading.
The Court also clarified that the mark of the petitioner will not be treated as abandoned till the next date and the petitioner shall continue to enjoy all rights as the registered proprietor of the mark.