Legality of removing a trademark from the register without issuing prior notice to the Registrant

The duration of registration of a trademark is for 10 years which can be renewed indefinitely from time to time. But before the trademark is set to expire, the Registrar has to send a notice to the registered proprietor or to each of the joint registered proprietors, informing them of the approaching date of expiration and the conditions, if any, subject to which the renewal of the registration may be obtained.[1] The Registrar has to send this notice not more than 6 months before the expiration of registration of the trademark in case no application for renewal has already been received. The notice has to be in the Form RG-3 provided in Trade Marks Rules, 2017.[2] Earlier, it was Form O-3 provided under Trade Marks Rules, 2002.

If the application for renewal has not been filed and the conditions have not been duly complied with, then the Registrar may remove the trade mark from the register. However, the Registrar shall not remove the trade mark from the register if an application for renewal has been filed along with the prescribed fee and surcharge within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years.[3]

Though, few points at issue are whether sending notice is a discretionary or a mandatory provision? What happens if the Registrar does not send the notice to the proprietor in the prescribed form and the proprietor fails to file renewal application within time? Can it still legally remove the trademark from the register? It would be appropriate to look at how various judicial forums have interpreted these provisions.

In the case of Disney Enterprises vs. Deputy Registrar of Trade Marks[4], the Intellectual Property Appellate Board (IPAB) held thatit is a well settled principle of law that before the removal of the trademark, the Registrar of Trade Marks must give prior notice in Form O-3.

The Board said that 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 without complying with the mandatory procedure prescribed in Section 25(3) of the aforesaid Act.

In the case of Union of India vs. Malhotra Book Depot[5], High Court of Delhi held that on a plain reading of Section 25, the inescapable conclusion is that the removal of the mark from the register has been made subject to sending of a notice in the prescribed manner calling upon the registered proprietor to renew the mark and permitted only upon the failure of the registered proprietor to do so and not merely on the failure of the registered proprietor to apply for renewal within the prescribed time.

In the case of Cipla Ltd. vs. Registrar of Trade Marks[6], the counsel for respondents submitted that public notice had been issued by the CGPDTM, calling upon the parties who had not paid the renewal fee and who had not received the Form O-3 notice to pay and have the trade mark renewed and that only the trademarks of those who had not complied with the said requisition had been removed from the register.

But the Bombay High Court held that the public notice does not constitute compliance with the provisions of section 25(3). Section 25(3) requires the Registrar to send the notice “to the registered proprietor”. A general public is not contemplated under the section.

In the case of The Court Receiver, High Court, Mumbai vs. The Registrar of Trade Mark[7], the Bombay High Court observed that the Respondent No. 1 did not place on record a single O-3 notice but attempted to show that there is compliance of Section 25(3) of the Act on the basis of the copies of some letters by which the Petitioner was informed that O-3 notice have already been sent.

In the absence of any reliable evidence that the O-3 notices were sent, the court did not accept the contention made by the learned counsel for Respondent and held that there is total non-compliance of the provision of Section 25(3) of the Act before taking impugned action against the Petitioner and the impugned action of Respondents is liable to be quashed.

In the case of Guruji Enterprises Pvt. Ltd. vs. Union of India[8], the petitioner submitted that it was mandatory for the Registrar of Trade Marks to send a notice prior to removal of the petitioner’s trade mark. Respondent submitted that the Form O-3 notice was generated in the electronic form and sent by post. Petitioner relied upon the Cipla Ltd. vs. Registrar of Trade Marks (supra) judgement.

The Delhi High Court was of the view that the judgment of the Bombay High Court in Cipla Limited (supra) offers no support to the petitioner because in this case, it has been categorically stated in the counter affidavit that the Form O-3 notice was generated in electronic form and was sent by post as well.Though learned counsel for the petitioner contended that the Form O-3 notice was never received by the petitioner, the court was of the view that any document sent by the Registrar would be deemed to have been made, served, left or sent at the time when the letter containing the same was delivered in the ordinary course of post in view of Rule 15 of the Trade Marks Rules.

In the case of M/s Alberto Culver USA Inc. vs. The Registrar of Trade Marks[9], the O-3 Notice was sent on the same day when the registration of the marks lapsed. The 2 member bench of Intellectual Property Appellate Board (IPAB) stated that Section 25 (3) of the Trade Marks Act, 1999 requires the Registrar to send notice in the prescribed manner “before the expiration of the last registration of a trade mark”. This is a mandatory requirement and the Registrar is obliged to comply with this.

CONCLUSION

From the above discussed case laws, it is quite clear that the registrar cannot validly remove a trademark without first giving a prior notice to the registered proprietor or to each of the joint registered proprietors. The notice to be sent by the registrar has to be the one prescribed by the rules. The Trademark Registry cannot sidestep the legal duty imposed on it under the Trade Marks Act and Rules. In case a trademark is removed without sending the prior prescribed notice to the registrant then the court will set aside the decision and order the Registrar of Trade Marks to renew the trade mark upon payment of the requisite fees and charges within requisite time period.

---

[1] Trade Marks Act, 1999, § 25(3), No. 47, Acts of Parliament, 1999 (India).

[2] Trade Marks Rules, 2017, R. 58, (India).

[3] Supra note 1

[4] Disney Enterprises vs. Deputy Registrar of Trade Marks, 2018 SCC OnLine IPAB 89

[5] Union of India vs. Malhotra Book Depot, (2013) 134 DRJ 504

[6] Cipla Ltd. vs. Registrar of Trade Marks, (2013) 56 PTC 217

[7] The Court Receiver, High Court, Mumbai vs. The Registrar of Trade Mark, 2016 SCC OnLine Bom 12975

[8] Guruji Enterprises Pvt. Ltd. vs. Union of India, (2016) 227 DLT 488

[9] M/s Alberto Culver USA Inc. vs. The Registrar of Trade Marks, [2011] IPAB 34