2013 (10) TMI 671 - HC - Companies Law

Restoration and Renewal of Trademark u/s 25(4) Bar of Limitation - The respondents did not issue the mandatory notice in form O-3, prior to removing the registered trade mark in question from the register, the removal of the said trade mark from the register was illegal - That being the position, the application to seek its restoration and for renewal of the registered trade mark under Section 25(4) cannot be said to be barred by limitation on the ground that it had not been made within the period of one year from the date of expiration of the last registration of the trade mark. Analysis of Section 25 of the aforesaid Act shows that a trade mark registered under the said Act may be renewed from time to time for periods of seven years each on making of an application and payment of the requisite fee - The application for renewal of the trade mark may be made, not earlier than six months before the expiration of the last registration of the trade mark - If such an application was made, the registration of the trade mark would be renewed, provided the conditions laid down under the Act and the Rules are satisfied. The mere expiration of the registration by lapse of time, and the failure of the registered proprietor of the trade mark 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 aforesaid Act or read with Rule 67 of the aforesaid Rules - Removal of the registered mark from the register without complying with the mandatory requirements of Section 25(3) of the Act read with Rule 67 of the Rules would itself be laconic and illegal. On the issue of restoration of the trade mark on the register, renewal should not be approached from a penal point of view - If restoration was just, it was bound be made - The delay, if any, had not led to registration of the trade mark in question in favour of any third party - No third party rights have, therefore, been created.

Summary

Issues Involved:
1. Restoration and renewal of the trademark registration.
2. Compliance with the prescribed procedure for removal of the trademark.
3. Issuance of mandatory notice before removal.
4. Legal consequences of non-compliance with procedural requirements.
5. Limitation period for restoration application.
6. Validity of the petitioner's title to the trademark.

Detailed Analysis:

1. Restoration and Renewal of the Trademark Registration:
The petitioner sought a writ of mandamus to direct the respondents to restore and renew the trademark registration No. 268211B dated 23.11.1970 in Class 16. The petitioner argued that the trademark registration, which expired on 23.11.1984, was not renewed, and the petitioner applied for its restoration on 07.10.2010.

2. Compliance with the Prescribed Procedure for Removal of the Trademark:
The petitioner contended that the respondent did not follow the prescribed procedure before removing the trademark from the register. According to Section 25 of the Trade and Merchandise Marks Act, 1958, the Registrar must follow specific steps before removing a trademark. The relevant sections and rules were cited to emphasize the procedural requirements.

3. Issuance of Mandatory Notice Before Removal:
The petitioner highlighted that under Section 25(3) of the Act, it was obligatory for the Registrar to send a notice in the prescribed manner to the registered proprietor before removing the trademark. The petitioner argued that the mandatory O-3 notice was not issued, as evident from the pleadings. The respondent's counter-affidavit did not specifically deny this claim and admitted that in various cases, the O-3 notice had not been issued.

4. Legal Consequences of Non-Compliance with Procedural Requirements:
The court analyzed the scheme of the Act and the Rules, concluding that the removal of a registered trademark without prior notice in form O-3 is illegal. The removal entails civil consequences for the registered proprietor, and compliance with the mandatory procedure is necessary. The court emphasized that the mere expiration of registration does not justify removal without following the prescribed procedure.

5. Limitation Period for Restoration Application:
The respondent argued that the application for restoration should have been made within one year from the expiration of the last registration. However, the court rejected this argument, stating that the removal of the mark ab initio was not in terms of Section 25(3) read with Rules 67 and 68. Since the mandatory notice was not issued, the application for restoration could not be barred by limitation.

6. Validity of the Petitioner's Title to the Trademark:
The respondent questioned the petitioner's title to the trademark, noting changes in the partnership and ownership over the years. The petitioner provided an explanation regarding the vesting of the trademark in a letter dated 07.10.2010. The court noted that the restoration should not be approached from a penal point of view and that no third-party rights had been created due to the delay.

Conclusion:
The court allowed the writ petition, issuing a mandamus to the respondents to restore and renew the trademark registration No. 268211B dated 23.11.1970 in Class 16 upon the petitioner paying the requisite charges and complying with the formalities. The court clarified that this order would not prejudice the rights of any third party who may claim the right of registration in the said trademark. The petition was disposed of accordingly.