2013 (11) TMI 593 - HC - Companies Law

Restoration of Trademark Held that - There was nothing on record to either establish or indicate that the requisite notice was sent to the petitioner - There were no circumstances that warrant an inference to that effect - Considering the consequences of the order we are not inclined to speculate in this regard in the respondents favour - In any event the failure to comply with the mandatory provisions of Section 25(3) was a jurisdictional issue which raises a pure question of law - We are therefore, inclined to entertain this petition in exercise of our extra ordinary jurisdiction under Article 226 of the Constitution of India. Analysis of Section 25 of the aforesaid Act shows that a trade mark registered 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 were satisfied - However, if no application was made for renewal of the registration of the trade mark and only two months were left before its expiration, then the Registrar was obliged to give a notice within one month to the registered proprietor or if there were more than one, to each of the registered proprietors, in writing in form O-3, of the approaching expiration of the registered trade mark - Upon receipt of said notice, the application for renewal of the registration may be made, in which case, the same would be renewed - If, however, after the expiration of the last registration of a trade mark, the renewal fee had not been paid despite issuance of a notice by the Registrar in form O-3, the Registrar may remove the trade mark from the register and advertise the fact forthwith in the journal. The question should not be approached from any penal point of view - If restoration was just, it is bound to be made - That was the effect of the scheme of the Act and the Rules - It was true there had been an inordinate delay - If that delay had led to registration of the trade mark in favour of someone else, it may be a different matter depending upon the facts of the case - No one else had applied for or claimed any right of registration in the said trade mark in the meantime - the respondents were directed to grant restoration and renewal of the trade mark registration CIPLA no.114794 dated 6th November 1945, of the petitioner paying the requisite charges and complying with the requisite formalities - Decided in favour of Petitioner.

Summary

Issues:
- Quashing of order removing trade mark from register
- Restoration of trade mark on the register

Analysis:
1. The petitioner sought a writ of certiorari to quash the order removing their trade mark "CIPLA" from the register and a mandamus to restore it. The trade mark was registered in 1945 and renewed until 2002, after which it lapsed due to non-renewal. The petitioner, upon discovering the removal in 2012, found no notice of expiration issued as required by Section 25(3) of the Trade Marks Act, 1999.

2. Section 25 of the Act mandates sending notice before expiration of registration for renewal, failing which the Registrar can remove the trade mark. The petitioner argued that the absence of Form O-3 notice rendered the removal illegal. Citing the Delhi High Court judgment in a similar case, the petitioner contended that removal without notice violates the Act's provisions.

3. The Delhi High Court judgment highlighted the necessity of prior notice before removal, emphasizing compliance with Section 25(3) and Rule 67 of the Rules. The Division Bench affirmed that removal without following the mandatory procedure is invalid, as rules cannot override the statute. The present case under the 1999 Act mirrors the relevant provisions of the 1958 Act upheld by the Delhi High Court.

4. The respondents argued that a public notice by the Controller-General was sufficient, but the court disagreed, stating that Section 25(3) requires notice to the registered proprietor specifically. The absence of record for the O-3 notice in 2002 raised doubts on compliance. The court declined to speculate and noted the lack of evidence supporting the notice issuance to the petitioner.

5. The respondents suggested the petitioner pursue an appeal under Section 91, but the petitioner contended it was inapplicable without communication of the registrar's decision. The court deemed compliance with Section 25(3) a jurisdictional issue, justifying intervention under Article 226 of the Constitution.

6. The court emphasized the restoration's necessity if just, as per the Act's scheme. Despite delays, no competing claims on the trade mark were evident. Therefore, the court directed restoration and renewal of the trade mark within two weeks upon the petitioner's compliance with formalities, disposing of the petition without costs.