The Bombay High Court recently opined that in the absence of a notice issued under sub-section (3) of Section 25 of the Trade Marks Act, any removal of the trademark from the register of the trademarks as maintained by Registrar cannot be recognized. Moreover, in such a situation, the right of the proprietor of the trade mark to renew the trademarks, by making an application and by submitting the prescribed fees would also stand recognized, the Court said.

Background

Division bench of Justice GS Kulkarni and Justice FP Pooniwalla were hearing a writ petition filed by Motwane Pvt Ltd. According to their petition, they had registered the trade mark "MOTWANE", which was renewed until February 17, 1983. The said marks are stated to have been in continuous use by the petitioner in its business since 1976, and it is their contention that post February 17, 1983, the registration of these marks remained to be renewed. However, the marks continued to be reflected as the petitioner's registered marks in the trade mark register, as seen on the official website of the Registrar of Trade Marks.

Moreover, a notice under subsection (3) of Section 25 of the Trade Marks Act, 1999 read with Rule 58 of the Trade Mark Rules, 2017 was not received by the petitioner from the Registrar in regard to the removal of these marks consequent to the non-renewal of the registration of the said marks.

Thereafter, the petitioner filed separate applications under the Right to Information Act with the Registrar seeking details regarding the issuance of any removal notice. The Office of the Registrar responded to these applications stating that no removal notice was issued, dispatched or delivered, in relation to any of the registrations of the subject marks. In these circumstances, the petitioner contends that as no notice under sub-section (3) of Section 25 of the Trade Marks Act was issued to them and the marks having continued to remain on the register of trade marks, it is an implicit recognition of the petitioner's legal right to seek renewal of the trade marks, by presenting appropriate renewal applications.

Submissions

Counsel for the petitioner Mr Hiren Kamod contended that the petitioner has a legal right to seek renewal of the registration of the marks in question, as the reasons/remarks as generated by the electronic system, would be untenable considering the clear provisions of Section 25 of the Trade Marks Act. He submitted that a notice as per Section 25(3) of the Trade Marks Act was not received by the petitioner, which was an admitted position as communicated by the reply to the petitioner's RTI applications. Hence, the petitioner's applications for renewal of the marks, as also such applications requiring consideration of respondent no. 1 would be the requirement of law. Mr. Kamod argued that the petitioner therefore, cannot be left in a situation that their applications for renewal are not maintainable.

In a situation where the trade marks had continued to remain on the register of the Registrar of Trade Marks, the legal right of the proprietor of the marks to get the same renewed was recognised by the Courts. In such a situation, it would be a clear mandate of the provision of Section 25 of the Trade Marks Act, that the renewal of the registration of the petitioner's marks ought not to be denied, Mr. Kamod submitted. He placed reliance on the decisions the Bombay High Court in Cipla Ltd. vs. Registrar of Trade Marks Boudhik Sampada Bhawan & Ors.; Harbans Singh Khanduja & Anr. vs. The Registrar of Trade Marks & Anr.  and Ipca Laboratories Ltd. vs. The Registrar of Trade Marks & Anr.

On the other hand, Additional Government Pleader Shruti Vyas appeared on behalf of the Registrar of Trade Marks and the Union of India. She opposed the petition relying on the affidavit-in-reply filed on behalf of the Registrar of Trade Marks. She submitted that there is admittedly a delay on the part of the petitioner in renewing the registration of the trade marks in question, hence it cannot be accepted that such default on the part of the petitioner, can in any manner amount to a fault of The Registrar.

She argued that such long delay would be fatal to the petitioner's case. If the petitioner intends to apply for renewal of the marks, they would be under an obligation to follow the procedure as prescribed under the rules and law, by filing appropriate applications and paying appropriate fees, so as to seek the renewal of their registration.

Judgment

The division bench observed-

"We find much substance in the contentions as urged on behalf of the petitioner. There appears to be no dispute that the marks in question stood registered in the petitioner's name and as noted by us hereinabove. The petitioner however failed to renew the registration of these marks. As respondent no. 1 did not adopt any procedure for removal of the marks from the register of trade marks, these marks, admittedly, have continued to remain in the register of marks as maintained by the Registrar of Trade Marks. It is not in dispute that there is a substantial delay on the part of the petitioner, that is the petitioner not taking steps to renew the registration of these marks.

However, considering the clear position in law as Section 25 of the Trade Marks Act would bring about, namely no steps being taken by the trade mark registry, to remove the petitioner's marks from the register of trade marks, it appears that the right of the petitioner to seek renewal of the trade marks continued to subsist. Such is the clear mandate, which would flow from sub-section (3) of Section 25."

Court noted that before the expiration of the registration of a trade mark, it was mandatory for the Registrar to send notice, in the prescribed manner, to the proprietor of the mark, intimating the date of expiration of the registration, and the conditions as to payment of fees and otherwise, upon which, a renewal of registration could be obtained by the registered proprietor.

Moreover, only on the expiration of the time prescribed in such notice, and if conditions as contemplated in the notice are not complied by the registered proprietor, the Registrar would be authorised to remove the trade mark from the register, the bench noted.
"Thus, in a situation of a mutual lapse on the part of the petitioner in not renewing the registration of its marks within the prescribed time accompanied with an inaction on the part of respondent no. 1 in non-issuance of notice under Section 23(3) of the Trade Marks Act, would not in any manner work to the disadvantage of the petitioner/registered proprietor, so as to not recognize the petitioner's right to seek renewal of the registration of the trade mark.

If this be the implication which is brought about by sub-section (3) of Section 25, then certainly, the petitioner is entitled to maintain its application for renewal of the registration of its trade marks, and in such event the electronic module should not have generated a remark that there is lapse of one year, so as to not recognise the petitioner's renewal applications."

Referring to the decisions in Harbans Singh Khanduja and Ipca Laboratories Ltd, the bench finally said that the legal right of the petitioner to seek renewal of registration of the trade marks in question would subsist. Thus the petition was allowed.

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