Trade Marks Registry Cannot Remove Trademark Without Mandatory Notice: Kerala High Court

The Kerala High Court has held that the Trade Marks Registry cannot remove a registered trademark from the register without first complying with the mandatory notice requirement under Section 25(3) of the Trade Marks Act, 1999.

Justice Shoba Annamma Eapen observed that the Registry was required to issue mandatory notice before removing the mark and held, "In the absence of compliance with the mandatory requirement of issuance of such notice under Section 25(3) of the Act, 1999, the respondents cannot be permitted to remove the trademark from the register."

The court directed the Registry to issue a fresh notice to the petitioner and decide his renewal application afresh in accordance with law.

S. Prasannan, who runs a small enterprise called "Vayalar Invention Centre", manufactures water level controllers under the brand name "VIC".

His trademark was registered on February 26, 2008, with the registration taking effect from the date of application, July 5, 2005, and remaining valid for ten years.

According to the petitioner, no notice regarding the expiry of the registration was ever issued as required under Section 25(3). When he checked the trademark status online on August 31, 2017, it was still shown as "Registered", but an alert stated that it was "likely to be removed due to non-filing of renewal request within the prescribed time limit." His attempt to file the renewal application online was unsuccessful.

He then submitted a renewal application on the same day along with the prescribed fee of ₹10,000 through a demand draft. The Registry returned the application, stating that the trademark had already expired on July 5, 2017, and could not be renewed. Challenging that communication, he moved the high court.

Counsel for the petitioner argued that the Registry was bound to entertain the renewal application since the mandatory notice under Section 25(3) had never been issued.

Appearing for the Registry, the Central Government Counsel submitted that the petitioner had not filed a renewal application within the period prescribed under the Act. The application submitted on August 31, 2017, was beyond time, it was argued, and the return intimation was therefore justified.

Examining Section 25(3) of the Act along with Rule 58 of the Trade Marks Rules, 2017, the court noted that the Registrar must issue a notice in Form O-3/RG-3 informing the registered proprietor about the approaching expiry of the registration before removing the trademark from the register. That statutory requirement had not been complied with in the present case.

"The authorities ought to have issued a notice in Form O-3/RG-3 informing the registered proprietor of the date of expiry but in the instant case, the aforesaid notice was not issued by the respondents before expiry of the trademark registration," the court observed.

Allowing the writ petition, the court directed the Registry to issue a fresh notice under Section 25(3) and Rule 58. Upon receiving the notice, the petitioner must submit a fresh renewal application, if not already submitted, along with the prescribed fee within the time specified in the notice.

The Registry has been directed to consider the application after giving the petitioner an opportunity of being heard and dispose of it in accordance with law.