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TMI Blog2013 (10) TMI 671X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. - W. P. (C) No. 7882/2010 - - - Dated:- 29-11-2011 - Vipin Sanghi,JJ. For the Petitioner : Mr. Gaurav Pachnanda, Mr Mohit Goel, Mr. Sidhant Goel and Mrs. Sangeeta Goel, Advocates For the Respondent : Mr. Sach ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... xpiration and the conditions as to payment of fees and otherwise upon 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. (4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar may, within one year from the expiration of the last registration of trade mark, on receipt of an application in the prescribed form, 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 seven years from the expiration of the last registration . (Emphasis supplied). 5. Reference is also made to Rules 66 to 69 of the Trade Merchandise Marks Rules, 1959 which were applicable at the relevant time. The said Rules read as follows: 66. Renewal of Registration. An application for the renewal of the registration of a trade mark shall be made on form TM 12 and may be made at any time not more than six month ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that petitioner has not, in any event, received the same. These averments have not been specifically denied. 8. On the other hand, in their counter-affidavit, all that is stated by the respondent is that a large number of regular removal of trademarks from the register could not have been done without following the due process as per the provisions of law. Therefore, only a presumptive statement is made. In fact, in para 7 of the counter-affidavit, it is the admitted position that in various cases, O-3 notice had not been issued by the registrar. This being the position, it can safely be assumed that in the petitioners case O-3 notice had not been issued as provided for in Rule 67 of the aforesaid rules. 9. Learned counsel for the petitioner places reliance on the decision of the Madras High Court in A. Abdul Karim Sahib and sons, etc., Tiruchirapalli v. The Assistant Registrar of Trade Marks, Madras, 1983 PTC 55, which has been followed by this Court in W.P.(C.) No.8950/2006, Kalsi Metal Works Pvt. Ltd. v. Union of India, decided on 16.05.2007. 10. On the other hand, the submission of learned counsel for the respondent is that once the registration had lapsed, the same coul ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , if no application is made for renewal of the registration of the trade mark and only two months are left before its expiration, then the Registrar is obliged to give a notice within one month to the registered proprietor or if there are 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 has 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. 15. An application for restoration of the trade mark to the Registrar and for renewal of its registration can be made within one year from the expiration of the last registration of the trade mark, accompanied by the prescribed fee. 16. The scheme of the Act and the Rules, therefore, is that before the removal of the mark from the register, the Registrar must give prior notice in form O-3 to the registered p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ast registration of the trade mark, but before its removal from the register. It is not that if the application for renewal of the trade mark is made after the expiration of the last registration of the trade mark, the same would not be entertained. The same would be entitled to be entertained, provided the mark has not been removed from the register by following the procedure prescribed under Section 25(3) read with Rules 67 and 68. Rule 68 necessarily has to be read in conjunction with Rule 67 and cannot be read independent of it. The procedure prescribed in Rule 67 should first be complied with before invoking Rule 68. 19. In the present case, since 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 has not been made within the period of one year from the date of expiration of the last registration of the trade mark. 20. I also agree ..... 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