Chennai: Intellectual Property Appellate Board has directed Trade Mark Registry, Mumbai, to consider plea of Disney Enterprises Inc, California, for renewing its trademark.
Setting aside the removal order passed by Trade Mark Registry, the Board directed Disney Enterprises to approach the Registry to renew its trade mark.
In the appeal filed by Disney Enterprises submitted that the firm was previously known as ‘The Walt Disney Company’, which was founded by Walt Disney. The name Disney became synonymous with entertainment. Its subsidiary and affiliated companies, engaged in producing and marketing a wide variety of goods and services related to entertainment, including animated and live action motion pictures, theme parks in USA and throughout the world. It also engaged in running resorts, cruise lines and production of consumer products. The firm has broadcasting networks such as ABC television network, ESPN and Disney Channel. Its comic characters including Mickey Mouse, Donald Duck, Minnie Mouse, Pluto and Goofy are famous across the world. Disney holds many trademark registrations in several countries.
The firm said public notice was issued by controller general of patents, designs and trademarks, in September 2010 stating that its registration of the trademark had lapsed on account of non-payment of renewal fee. Subsequently, Deputy Registrar of Trademarks, Trade Mark Registry, Mumbai, passed an order in January 2012 stating that Disney’s trademark had lapsed on account of non-payment of renewal fee and it was removed from the Registry. Aggrieved over this, the firm filed the present appeal.
The firm contended that findings of the Deputy Registrar was bad in law. Before the removal of the trademark, the Registrar of Trade Mark Registry must give prior notice to the registered proprietor putting them to notice of the impending expiry of the registration of the mark. Hence, the order passed by the Deputy Registrar was wrong in law and contrary to natural justice.
The bench comprising its chairman justice Manmohan Singh and technical member (trademarks) Sanjeev Kumar Chaswal said mere expiration of the registration by lapse of time and the failure of the registered proprietor of the trade mark to the get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Registry without complying with the mandatory procedure prescribed in section 25 (3) of the Trade March Act 1999. The order passed by the Deputy Registrar is wrong in law and contrary to natural justice.
Setting aside the order the bench directed the Disney Enterprises to approach the Deputy Registrar in order to renew the present trade mark on filing requisite fee with the DR, who on deposit of all the government fee shall issue registration certificate to the attorney of the firm along with its renewal certificate.
