India: Notice For Renewal Before Expiry: A Duty On Registrar

Last Updated: 6 January 2014

Article by Himanshu Sharma and Rangoli Nigam1

A trademark is an important asset of an organization and protection of the same is the utmost priority in order to enhance the value of the trademark. A trademark once registered is valid for ten years from the date of application of the trademark. The rights in a trademark are not limited for a specific period of time like other Intellectual Property Rights such as Patent, Design or Copyright. Once registered, a trademark can be renewed after every ten years, till perpetuity. If an application for renewal of trade marks is not filed in the prescribed form, within, the prescribed time period then the trademark may be removed from the register, hence timely renewal of trademark is necessary to use the rights provided by the registration of the trademark under the law.

Procedure For Renewal Of Trademark

Section 25 of the Trade Marks Act, 1999 elicits that a trademark is due for renewal not prior to the six months before the date of expiry of the trademark and an application for renewal can be filed, within, this period without paying any surcharges. Once the date of renewal of trademark has expired, the owner of trademark can still file the application for the renewal in next six months after paying surcharge in addition to the fee for renewal of trademark. The owner of trademark has an obligation to renew his trademark before expiration else his trademark will be removed from the Register due to non-renewal. The Act has also put an obligation under the Act on the Registrar regarding the renewal under section 25 (3) read with Rule 64 of the Trademark Act, 1999 and Trademark Rules, 2002 and the same are reproduced below:

Further Section 25 (3) of the Act provides that

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 condition 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:

As per Rule 64 of the Trademark Rules, 2002

"At a date not less than one month and not more than three months before the expiration of the last registration of a trade mark, if no application in Form TM-12 for renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor or in the case of a jointly registered trade mark each of the joint registered proprietors and each registered user, if any, in writing in Form O-3 of the approaching expiration at the address of their respective principal places of business in India as entered in the register or where such registered proprietor or registered user has no principal place of business in India at his address for service in India entered in the Register."

The above mentioned provisions put an obligation on the Registrar to give a notice to the registered proprietor regarding the approaching date of expiry of his trademark. Whether there is an obligation on the Registrar to give a physical notice to the proprietor regarding the approaching expiry date or the online notice of the same on the official website of the Indian Trademark Office would serve the purpose was the issue in the recent case of Cipla limited Vs Registrar of Trademarks & Anr2 before the High Court of Bombay. The issue was whether the removal of a trademark without any prior notices from the registrar is ultra-vires the law.

Facts

  1. The petitioner sought a writ of certiorari to quash and set aside the order of the respondent, removing from the register the petitioner's trademark CIPLA and a writ of mandamus directing him to restore to the register the petitioner's trade mark.
  2. The mark was registered with effect from 6.11.1945 and thereafter, the registration was renewed from time to time and was last renewed on 6.11.1995 for a period of 7 years till 6.11.2002. Thereafter, the registration was not renewed due to inadvertence.
  3. In the first quarter of 2012, the petitioner came to know that the trademark was removed from the Register due to non renewal.
  4. The petitioner had not received any notice from the Registrar of Trademark notifying the date of expiration and the conditions of payment of fees for the renewal of registration.

Issues

  1. Whether a trademark registration can be removed from the Register without giving notice to the Proprietor?

Contentions

  1. Contentions by the Appellants

    1. That the impugned order is contrary to Section 25 of the Act, in particular sub-section (3) thereof and Rule 64 of the Trade Marks Rules, 2002.
  2. Contentions by the Respondents

    1. That the Controller- General of Patents, Designs and Trademarks who is the Registrar of Trademarks had issued a public notice calling upon the parties who had not paid the renewal fees and who had not received the Form O-3 notice to pay and have the trademark renewed.

Judgment

The Hon'ble Court decided in favor of the appellants and directed the appellants to grant restoration and renewal of the trade mark, within, two weeks of the petitioner paying the requisite charges and complying with the requisite formalities.

Analysis

The Hon'ble Court in the instant case was to determine if the service of notice to the registered user of a trademark was a precondition to its removal. The Hon'ble court, whilst interpreting Section 25 of the Trademarks Act and Rule 64 of the Trade and Merchandise Marks Rules 2002 opined that "It is pertinent to note that Section 25(3) states that "the Registrar shall send notice". The use of the word shall establish that the Registrar is mandatorily required to send a notice prior to the removal of the registered trademark from the register." Further the Court also observed the judgment of Delhi High Court in case of Malhotra Book Depot v. Union of India & Ors3 where the court has interpreted the section as one creating an obligation on the Registrar to give notice within one month to the registered proprietor in writing in Form O-3. The appeal in the aforementioned case affirmed the judgment of the Hon'ble High Court. Further the Hon'ble Court was of the opinion that since the removal of the Trademark from the register has civil repercussions, hence, such removal cannot take place without a notice of the same being delivered to the Registered Proprietor.

Moreover the Hon'ble Court observed that Section 25 of the Act should be read with Rule 64 of the Trade Marks Rules 2002 for a better understanding of the implications of the section. The court held that upon reading Rule 64 alongside Section 25 of the Act, it is pertinent that the legislative intention was to provide the registered proprietor with a notice for expiration of the registered trade mark by the Registrar mandatorily. The Section 25 (3) requires the Registrar to send the notice to the "registered proprietor" himself and notice to the general public cannot be deemed to be notice to the registered proprietor himself. Also, since the records pertaining to the year 2002 were not available it could not be established if the notice was affirmatively sent to the registered proprietor.

Conclusion

The Registrar of Trademark has right under the Act to remove a trademark in case the same is not renewed by the Registered Proprietor within prescribed time. At the same time the Act has also put an obligation on the Registrar to remind the owner of the trademark regarding the approaching date of expiry of the trademark by giving a notice in writing.The removal of trademark from the Register without the notice being served to the registered proprietor is in contravention of section 25 of the Trade Marks Act, 1999 read with rule 64 of the Trade and Merchandise Marks Rules, 1959 and such removal is contrary to Act and is therefore, bad in law.

Footnotes

1. Student of Symbiosis Law School Pune IV year.

2. Writ Petition No. 1669 of 2012

3. 2012 (49) PTC 354( Del.)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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