CAN A REGISTERED TRADEMARK BE REMOVED WITHOUT PRIOR NOTICE TO THE REGISTERED PROPRIETOR?
On 17th January 2018 in the matter of Keelnage Products (India) Private Limited vs. 1. The Registrar of Trade Marks 2. Union of India, the Bombay High Court heard the Petition seeking prohibition of removal of the Petitioner’s trademark ‘KLITOLIN’ from the records of the Register of Trademarks.
Kleenage Products Private Limited is a company engaged in manufacture and sale of washing and cleaning preparations. The Petitioner, as per the registration procedure, applied for registration of their trademark ‘KLITOLIN’ which was accepted by the Trade Marks Registry and in between 1988 to 2009, the qualified trademark was renewed multiple times.
The Petitioner failed to tender application for the renewal of the said trademark which was due for renewal on August 21, 2009. Thereafter, it was discovered by the Petitioner that the said trademark is likely to be removed from the Register of Trademarks due to non-renewal of the original or previous registration of the said trademark.
Advocate of the Petitioner, Hiren Kamod submitted that because Respondent No.1 has failed to issue the mandatory O-3 notice, restoration ought to be allowed. He placed reliance on the Judgement of a Division Bench of the Bombay High Court in Cipla Limited v Registrar of Trade Marks and Another, wherein it was held that “the Registrar must give prior notice in form O-3 to the registered proprietor or to each of the joint registered proprietors in writing, putting them to notice of the impending expiry of registration of the mark. The removal of the registered mark from the register entails civil consequences for the registered proprietor of the mark. The said removal of the registered trade mark, in the scheme of things, therefore, cannot be done without prior notice to the registered proprietor/joint proprietors in the prescribed form.”
The Judgement further stated 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 by the Registrar of Trademarks without complying with the mandatory procedure prescribed in Section 25(3) of the aforesaid Act or read with Rule 67 of the aforesaid Rules.”
Section 25 in The Trade Marks Act, 1999- Duration, renewal, removal and restoration of registration:
(1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration 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: Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid 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 under sub-section (2).
(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, 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 ten years from the expiration of the last registration.
The Bombay High Court held that any such removal can only be possible if prior notice has been sent to the Registered Proprietor which is mandatory under Section 25(3) of the Trade Marks Act 1999 and allowed the Petition and directed the Registrar to consider the application tendered by the Petitioner for renewal of trademark along with the prescribed fee.
Therefore, the registered trademark cannot be removed from the Register of Trademarks by the Registrar of Trademarks without prior notice to the registered proprietor.
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