Delhi High Court Allows Renewal Of 'APEXSEALS' Trademark For Being Removed Without Mandatory Notice

The Delhi High Court on 28 October permitted businessman Parveen Kumar Gulati to seek renewal of his registered trademark 'APEXSEALS', which had been removed from the Trade Marks Register for non-renewal.

A Bench of Justice Vikas Mahajan held that the Registrar could not remove the mark without issuing a mandatory notice of its impending expiry.

Gulati had applied to register 'APEXSEALS' in Class 17 in December 1996, claiming use since March 1993. Although the mark was advertised in 2006, the registration certificate was issued only on 10 February 2007.

By then, the initial ten-year validity period, calculated from the application date, had expired on 24 December 2006. Following a change in management and an internal audit, Gulati discovered that the mark had been removed from the Register on account of non-renewal.

He argued that the Registrar had not issued the prescribed Form O-3 notice under Section 25(3) of the Trade Marks Act, 1999, read with Rule 64 of the Trade Marks Rules, 2002.

The Registrar opposed the petition, contending that no Form O-3 notice was required because the renewal date had already passed when the registration certificate was issued. It argued that Gulati should instead have sought renewal within six months of the actual registration date.

The Court held that the statutory notice requirement could not be bypassed merely because the registration certificate was issued after the initial validity period had expired.

It observed that once the mark was registered and the certificate issued, the Registrar had all the necessary details to send the notice.

Further, the Bench held that even if the proprietor had failed to apply for renewal within six months of the actual registration, the mark could not be removed without first calling upon him to renew it.

Accordingly, the High Court permitted Gulati to file a fresh Form TM-R application with the prescribed fee within two weeks and directed the Registrar to process it in accordance with the Rules.