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Thursday, March 28, 2013

Publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication”


A divisional Bench of Delhi High Court referred a revision to full bench of Delhi High Court, to consider as to whether an other Divisional Bench of this court in the case of Dabur India Ltd. Vs. Amit Jain & Anr. 2009 (DEL) has correctly held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000. The earlier Division Bench had concurred with the view of learned Single Judge of Calcutta High Court in the case of Gopal Glass Works Ltd. Vs. Assistant Controller of Patents & Designs 2006 (Cal.) where it was held that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. 

The Divisional Bench doubted the correctness of the ratio in the judgments in the cases of Dabur India Ltd.  (Delhi 2009) and Gopal Gas Works Ltd. (Kolkata 2006) for having overlooked the provision of Section 44 of the Act which provides that a design which is registered abroad in a Paris Convention country, and to which convention India is a signatory, gets priority over an Indian registered design, provided that the person who gets the designs registered abroad in a Paris convention country, within six months of the date of the application made in the said convention country abroad, applies and gets registration in India, hence the reference order was made to Full Bench.

In Dabur India Ltd. it was held that publication abroad by existence of the design in the records of the Registrar of designs which is open for public inspection cannot be said to be “prior publication” as per the meaning of the term as found in Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (hereinafter referred to as "the Act").

In Gopal Gas Works Ltd.  it was held that that mere publication of designs, specifications, drawings and /or demonstrations by the patent office in a foreign country would not in itself amount to publication for rendering a design registered in India liable to cancellation. 

The Full Bench in order to answer the reference with clarity, the Court framed following issues/aspects to approach the issues/ aspects independently as well as  inter-play and inter-relation of those issues as regards common points:

(i) When Section 19(1) (a) of the Act provides for cancellation of a design registered in India on account of a design previously registered in India, whether the said provision has to be read literally only i.e only a design registered in India can be basis for cancellation of a subsequent design registered in India and not a design registered abroad in a convention country or whether the provision of Section 19(1) (a) takes within its sweep and includes a previous design registered abroad in a convention country for cancellation of a design registered in India. Putting it differently, is a design previously registered abroad in a convention country a ground under Section 19(1) (a) of the Act for cancellation of a design subsequently registered in India. 

(ii) If under Section 19(1)(a) a design registered in a convention country abroad is a ground for cancellation of a design registered in India, is this rule absolute or the rule falls in those circumstances where the design registered abroad is not applied to be got registered India within a period of six months of making of the application in a convention country abroad. Be it noted that the issue of design registered abroad along with its prior publication can be under certain circumstances a basis of cancellation of a design which is registered in India, however, that is the subject matter of Section 19(1)(b) and not 19(1)(a), because the aspect of prior publication is within the subject matter of Section 19(1)(b) as stated in the immediately following issue. 

(iii) If a design registered in a convention country abroad is not a ground for cancellation of a design registered in India under Section 19(1)(a), then, whether the registration abroad entitles cancellation of a design registered in India because the registration abroad conclusively amounts to prior publication as per that expression found in Section 19(1)(b) read with Section 4(b) of the Act.

(iv) What is the meaning of the expression “publication abroad”/“published abroad”, for it then to be argued that on account of such publication abroad, the design registered in India becomes liable to cancellation in terms of Section 19(1)(b) of the Act.

An offshoot of the aforesaid issues (iii) and (iv) above is that whether in all circumstances and all cases, the record of the Registrar of Designs open to public inspection abroad should be held to be prior publication so that on the basis cancellation can be applied under Section 19(1)(b) of the Act for the design registered in India, and if, the record of the Registrar of Designs in a convention country abroad is to be taken as a basis for cancellation of a design registered in India, whether it is an unqualified rule or whether it has to be examined as per the facts of each case that record of the Registrar of Designs in a convention country abroad does or does not amount to prior publication in terms of the expression in Section 19(1)(b) and Section 4(b) of the Act.

Various provisions of the Design Act were referred. Few most relevant of these are

Section 4. Prohibition of registration of certain designs.- A design which-
 (a) is not new or original; or 
 (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible Form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or 
(c) is not significantly distinguishable from known designs or combination of known designs; or 
(d) comprises or contains scandalous or obscene matter, shall not be registered.

Section 19. Cancellation of registration
(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-
 (a) that the design has been previously registered in India; or
 (b) that it has been published in India or in any other country prior to the date of registration; or
 (c) that the design is not a new or original design; or 
 (d) that the design is not registrable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.

The Court concluded the entire discussion as follows:


(i) Existence of a design registered abroad in a convention country is not a ground under Section 19(1)(a) for cancellation of a design registered in India.

(ii) The provision of Section 44 does not have the effect of changing the literal interpretation of Section 19(1)(a) inasmuch as under Section 44, the foreign registered design becomes an Indian registered design, although, the date of registration of the foreign registered design which is registered in India will relate back and have retrospective effect from the date of application first made in the convention country abroad. Once, the foreign registered design becomes registered in India, the very fact that it is an Indian registered design it will be a previously registered design in India, and by virtue of the priority rule the same will be a ground for cancellation of a design subsequently registered in India on an application made after the date of the priority date given of the application made abroad for registration of the design in a convention country.

(iii) The benefit of foreign registered design after its registration in India for seeking cancellation of an Indian registered design under Section 19(1)(a) will only be available if the application for registration in India is made within six months of the date of the application made in the convention country abroad, notwithstanding there may be prior publication in this interregnum six month period.

(iv) In case, the application for registration in India is not made within the statutory permissible period of six months of having made the application abroad, then, the design registered in India in the meanwhile in six months period cannot be cancelled under Section 19(1)(a), though, the foreign registered design owner on proving of prior publication can have an effective defence to the infringement action filed by the Indian registered design owner and which defence against an infringement action is available vide Section 22 relying on the ground of prior publication under Section 19(1)(b) read with Section 4(b) of the Act.

(v) What is publication is essentially a question of fact to be decided as per the evidence led in each case. Existence of a design in the publication record/office of a Registrar of design abroad may or may not depending on the facts of each case amount to prior publication and there would be prior publication only if the prior registered design is made public and has that much necessary clarity as applied to a specific article capable of judged by the visual appearance or the eye of the mind, that by use of the said knowledge and information in the public record of the Registrar of design office, an article can be made using that design which will be a piracy or violation of that design i.e putting it differently unless and until there is complete clarity and understanding to the naked eye or the eye of the mind of the foreign registered design as found in the public record of the Registrar of design qua a specific article, it cannot be said that such public record will amount to prior publication.

Thursday, March 21, 2013

Various fee related to copyright filing, prosecution, licensing have been enhanced under the Copyright Rules 2013 with effect from March 14, 2013




For an application for COMPULSORY LICENSE :
For a license to republish a Literary, Dramatic, Musical or Artistic work (Sections 31, 31A,31B* and 32A)
Rs. 5,000/- per work
For a license to communicate an any work to the public by Broadcast(Section 31(1)(b))
Rs. 40,000/- per applicant/per sataton
For license to republish a Cinematograph Film (Section 31)
Rs. 15,000/- per work
For a license to republish a sound recording (Section 31)
Rs. 10,000/- per work
For a license to perform any work in public (Section 31)
Rs. 5,000/- per work
For a license to publish or communicate to the public the work or translation (Section 31A)
Rs. 5,000/- per work
For a license to publish any work in any format useful for person with disability (Section 31 B)
Rs. 2,000/- per work
For an application for a license to produce and publish a translation of a Literary or Dramatic work in any Language  (Section 32 & 32-A )
Rs. 5,000/- per work
For an application for registration or copyright in a:
- Literary, Dramatic, Musical or Artistic work
Rs. 500/- per work
- Provided that in respect of a Literary or Artistic work which is used or is capable of being used in relation to any goods (Section 45)
Rs. 2,000/- per work
For an application for change in particulars of copyright entered in the Register of Copyrights in respect of a:
- Literary, Dramatic, Musical or Artistic work
Rs. 200/- per work
- Provided that in respect of a literary or Artistic work which is used or is capable of being used in relation to any goods (Section 45)
Rs. 1,000/- per work
For an application for registration of Copyright in a Cinematograph Film (Section 45)
Rs. 5,000/- per work
For an application for registration of change in particulars of copyright entered in the Register of Copyrights in respect of Cinematograph film (Section 45)
Rs. 2,000/- per work
For an application for registration of copyright in a Sound Recording (Section 45)
Rs. 2,000/- per work
For an application for registration of changes in particulars of copyright entered in the Register of Copyrights in respect of Sound Recording (Section 45)
Rs. 1,000/- per work
For taking extracts from the indexes (Section 47)
Rs. 500/- per work
For taking extracts from the Register of Copyrights (Section 47).
Rs. 500/- per work
For a certified copy of an extract from the Register of Copyrights of the indexes (Section 47)
Rs. 500/- per copy
For a certified copy of any other public document in the custody of the Register of Copyright or Secretary of the Copyright Board
Rs. 500/- per Copy
For an application for prevention of importation of infringing copies (Section 53) per place of entry
Rs. 1,200/- per work

Wednesday, March 20, 2013

Mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by Rule 38(4) of Trade Marks Rules, 2002


The Mumbai HC held that placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. At the highest, it can be said to have been communicated only on the date on which it was noticed on the website. If a hearing is applied for within a month the application for registration cannot therefore, be deemed to have been abandoned for want of compliance or seeking hearing as envisaged under Rule 38(5).

Brief facts of the case:

(i)        On 01.10.2010, petitioner applied for registration of the mark “CMA” in class 41.
(ii)       On 30.03.2011, petitioner vide a letter informed the Respondents that it had not received any response in respect of its application for registration despite several enquiries having been made from time to time and that as a result thereof, it was unable to provide training and award degrees / certificates on the “newest branches of management and accountancy”.
(iii)      On 19.09.2011 the Application was examined under provisions of the Trade Marks Act, 1999 and Trade Mark Rules, 2002 and afterwards uploaded on the respondents’ website on some later date. Admittedly, the letter / examination report dated 19.09.2011 was not forwarded to the petitioner or its advocates. It was merely placed on the respondents’ website
(iv)      On 13.03.2012 the petitioner noticed on the respondents' website the examination report.
(iv)      Vide letter dated 28.03.2012, the petitioner's advocate requested the respondents to treat the date of downloading from the website as the date of the petitioner's knowledge of the order contained in the said letter / examination report dated 19.09.2011 ; exercised the option for furnishing the objections and applied for a hearing.
(V)       Vide letter dated 30.03.2012, the petitioner's advocate applied for a hearing, which was denied to them.

The relevant provision dealing with above issue is Rule 38 of the Trademark Rules, 2002 and it is reproduced herein:

38. Expedited examination, objection to acceptance, hearing :-
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(4) If on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the Applicant.

(5) If within one month from the date of communication referred to in sub-rule(4), the applicants fails to comply with any such proposal or fails to submit his comments regarding any objection or proposal to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.

The Court observed that Trademark Registry was bound to communicate any objection to acceptance or proposal to acceptance subject to conditions in writing to the Petitioner/ Applicant. The Registry admittedly did not do so. Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posted on their website. Rule 38(4) by itself does not require an applicant for registration to inspect the respondents' website. The petitioner therefore cannot be imputed with the knowledge of the said letter dated 19.09.2011. The Court held that placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by rule 38(4). The letter dated 19.09.2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website viz. 13.03.2012. Within one month thereof, the petitioner's advocate by the said letter dated 30.03.2012 applied for a hearing, which he has been denied thus far. The petitioner's application for registration cannot therefore, be deemed to have been abandoned. 

Monday, March 11, 2013

Delhi High Court Upheld Single Bench Judgement directing the restoration and renewal of the Trademark "MBD" 29 years after due date of renewal


Divisional Bench of Delhi High Court in LPA no. 564 of 2012 titled Union of India & Ors. Vs. Malhotra Book Depot has upheld the judgment dated November 29, 2011 passed by single bench of Delhi High Court in W.P.(C) No.7882/2010 and has directing the restoration and renewal of the Trademark of the respondent "Malhotra Book Depot" for mark "MBD" in class 16 after satisfying that the respondent is the registered proprietor/successor of the registered proprietor of the registered trademark which has expired and that in the interregnum same or similar marks have not been registered.

Brief facts of the case:

(i)        The predecessors of the respondent (i.e. Shri Ashok Kumar Malhotra and late Shri Balbir Singh, trading as M/s. Malhotra Book Depot) stated to be a partnership firm of Ms. Satish Bala Malhotra, Ms. Monica Malhotra Kandhari and Ms. Sonica Malhotra Kandhari) had applied for and were granted registration of the Trademark “MBD” in Class 16 for the goods “publications (printed) and books” vide Trade Mark Registration dated 23rd November, 1970;
(ii)       Registration thereafter duly renewed from 23rd November, 1977 to 23rd November, 1984;
(iii)      On 1st April, 1992 the constitution of M/s Malhotra Book Depot was changed and a fresh Partnership Deed was executed between the new partners i.e. Shri Ashok Kumar Malhotra and Ms. Satish Bala Malhotra;
(iv)      On demise of Shri Ashok Kumar Malhotra the constitution of the respondent M/s Malhotra Book Depot was again changed and a fresh Partnership Deed was executed between Ms. Satish Bala Malhotra, Ms. Monika Malhotra Kandhari and Ms. Sonica Malhotra Kandhari on 30th December, 2009;
(v)       In April, 2010 the respondent filed a suit for permanent injunction restraining infringement of the Trademark MBD and in connection with the said suit applied for Certificate for Use in Legal Proceedings – however the application was returned by the appellant no.3 Registrar of Trade Marks as no records/details of the said Trademark could be traced in the database of the Registrar – in the consequent investigation by the respondent it was realized that the Trademark had not been renewed after 23rd November, 1984;
(vi)      Respondent on 7th October, 2010 applied for renewal and restoration of the said Trademark but which application was not accepted.
(vii)     Respondent sought a writ of mandamus for restoration and renewal of the Trademark on the basis that statutory Notice in Form O-3 under the Trade and Merchandise Marks Rules, 1959 (the Rules as were applicable at the relevant time) informing the petitioner that the registration of the mark was expiring and can be renewed was not sent by the Registrar to the respondent and the Registrar could not thus deny restoration/renewal of the Trademark.

The Appellants challenged the same on mainly the following grounds that renewal of the mark had become due on 23rd November, 1984 i.e. 26 years prior to the filing of the writ petition and the writ petition suffered from delay and laches; that the factum of removal of the Trademark was notified in the Trade Mark Journal No.997 dated 16th December, 1990 for non-payment of renewal fees;  that such removal could not be without following the due process as per the provisions of law and the respondent was taking advantage of the fact that the 26 years old records of dispatch of Notice in Form O-3 would not be available with the Registrar; that on receipt of complaints regarding non-receipt of Registration Certificates and non-issuance of the Form O-3 Notices, Public Notices dated 24th September, 2010 and 31st November, 2010 were issued advising the public at large to file the petitions in the prescribed manner; that the respondent was also advised to file a petition in this regard vide letter from the Trade Mark Registry issued on 24th January, 2011.

The learned Single Judge allowed the writ petition observing/finding/holding:-
(a)        that the Registrar in its counter affidavit, in response to the unequivocal plea in the writ petition, that the Notice in Form O-3 was not received by the respondent, had merely stated that removal of the mark could not have been done without following the due process as per the provisions of law and had thus made only a presumptive statement; further, the Registrar in para 7 of the counter affidavit had admitted that in various cases O-3 Notices had not been issued; the learned Single Judge thus concluded that in the respondents case O-3 Notice had not been issued as provided for in Rule 67;
(b)       that under Section 25 of The Trade and Merchandise Marks Act, 1958 (the Act) (which was applicable in the year 1984 when the Registration of the mark of the respondent expired), the application for renewal of the registration could be made upon receipt of the Notice in Form O-3;
(c)        that the Registrar could remove the Trademark from the Register and advertise the factum of removal in the Journal only after a Notice in Form O-3 had been issued;
(d)       that the removal of the registered Trademark from the Register entails civil consequences for the registered proprietor of the mark;
(e)        the said removal of the registered Trademark cannot be done without prior notice to the registered proprietor in the prescribed form;
(f)        mere expiration of the registration by lapse of time and the failure of the registered proprietor of the Trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Register by the Registrar of Trade Marks without complying with the mandatory procedure prescribed in Section 25(3) of the Act r/w Rule 67 of the Rules;
(g)       removal of the registered Trademark from the Register without complying with the mandatory requirements of Section 25(3) would itself be laconic and illegal;
(f)        mere expiration of the registration by lapse of time and the failure of the registered proprietor of the Trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Register by the Registrar of Trade Marks without complying with the mandatory procedure prescribed in Section 25(3) of the Act r/w Rule 67 of the Rules;
(g)       removal of the registered Trademark from the Register without complying with the mandatory requirements of Section 25(3) would itself be laconic and illegal;
(h)       that the plea of the Registrar that the application for restoration and renewal of the mark was beyond the time prescribed in Section 25(4) and Rule 69 could not be accepted because the removal of the mark from the Register was not in terms of Section 25(3) r/w Rules 67 & 68;
(i)        that under the Act and the Rules, mere lapse of the time does not result in its removal and for which Notice in Form O-3 is required to be given; (j). that in the facts of the present case, since the mandatory Notice in Form O-3 had not been given prior to the removal of the mark, the application seeking its restoration and renewal could not be said to be barred by time.

In Letter Patent Appeal before the Divisional Bench, the Appellant also relied on order dated 16th April, 2012 of the Intellectual Property Appellate Board (IPAB) in OA No.59&60/2011/TM/KOL titled Pernod Ricard India Private Ltd. Vs. The Controller General of Patents, Designs and Trade Marks holding that the Act does not make the renewal of the trademark dependent upon the service of Notice in Form O-3 and does not make the factum of removal of the mark dependent on the issuance of such notice.

The Respondent relied on Tetragon Chemie (P) Ltd. Vs. Government of India (2007) where a Single Judge of the Karnataka High Court held that in the absence of Notice in Form O-3, the order of removal of the mark on the ground of non-payment of renewal fees within the prescribed time is bad and directed renewal.

The divisional bench considered the importance of the issue raised and the difference in the opinion of the learned Single Judge of Delhi High Court and the IPAB and after due consideration of the provisions of the Act, found reasoning of IPAB contrary to the legislative intent. The Court observed that legislature and its delegatee, not only in the Act but also in the Rules, have clubbed “Duration, renewal and restoration of registration” and “Renewal of Registration and Restoration”.

The relevant provision dealing with renewal, removal and restoration are as follows:
25. Duration, renewal, removal and restoration of registration.-
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(4) Where a trade mark has been removed from the register for non- payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.
The relevant provision dealing with renewal, removal and restoration of the Trademark is as follows:
25. Duration, renewal, removal and restoration of registration.-
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(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register: expiration and the conditions as to payment of fees and otherwise upon Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark a d shall renew the registration of the trade mark for a period of ten years under sub- section (2).

Therefore as per provisions of Section 25(3) issuance of a notice on Form O3 is must intimating the registered proprietor about the deadline of renewal and consequence thereof.
The Court also considered the provision of Section 26:
26. Effect of removal from register for failure to pay fee for renewal.—Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either—
a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or
(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

The Court observed that though they have held that Section 25(4) prescribes the time of one year from the expiration of the last registration for restoration and is applicable only where removal is in compliance of Section 25(3) and Rule 67 but Section 26 appears to suggest that the said period of one year in Section 25(4) is also to be read as commencing from the date of removal and not from the date of expiration of the last registration, where removal is not immediately after the expiration of the last registration. Else, there would be no logic/sense in in Section 26 providing for deeming the mark on the register for the purposes of any application for registration of the same or similar mark. The only answer, according to us, can be that the registered proprietor of the trademark which has been removed, during the said one year has a right of seeking restoration and renewal thereof. If the legislative intent was to vest a right of renewal only for a period of one year from the expiration of the last registration, the operation of Section 26 would also have been for one year from the date of expiration of the last registration of the trademark and not one year from the date of removal.

The Court also relied upon Section 2(r) and Section 29 of the 1958 Act. The Section 2(r) of the 1958 Act defines the “registered trademark” as a trademark which is actually on the register and not as a trademark, registration of which is valid/has been renewed. Similarly Section 29 provides that a registered trademark is infringed when a person not being the registered proprietor uses in the course of the trade, a mark which is identical with or deceptively similar to the trademark which is registered. Since as per Section 2(r) a registered trademark is a trademark which is actually on the register, under Section 29, registered trademark would be infringed even though its registration may have expired, so long as it has not been removed from the register.

The Court observed that Section 26 would become otiose/redundant if it were to be held that the rights of a registered proprietor to restoration and renewal of mark extinguish on the expiry of one year from the expiration of the last registration and irrespective of whether the trademark is actually removed from the register immediately on such expiration or after considerable time. If the registered proprietor whose trademark has expired, irrespective of whether the same had been removed or not from the register were to be left with no right therein, there would not have been any need in Section 26 to preserve such rights for a period of one year from the removal.

The Court held that in the light of the view taken, that removal without following the mandatory procedure prescribed therefor is bad.

However while dismissing the appeal the Court modified the direction given in the impugned judgment to the Registrar to restore and renew the mark with "a direction to the Registrar to restore/renew the mark after satisfying that the respondent is the registered proprietor/successor of the registered proprietor of the registered trademark which has expired and that in the interregnum same or similar marks have not been registered."

It would be interesting to note what if similar marks have been registered in the interregnum period of approx. 29 years, as it was not case where the Respondent stopped using the mark and the mark had been used continuously and openly and is associated and identified with them.

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