TMI Blog2013 (11) TMI 593X X X X Extracts X X X X X X X X Extracts X X X X ..... , provided the conditions laid down under the Act and the Rules were satisfied - However, if no application was made for renewal of the registration of the trade mark and only two months were left before its expiration, then the Registrar was obliged to give a notice within one month to the registered proprietor or if there were more than one, to each of the registered proprietors, in writing in form O-3, of the approaching expiration of the registered trade mark - Upon receipt of said notice, the application for renewal of the registration may be made, in which case, the same would be renewed - If, however, after the expiration of the last registration of a trade mark, the renewal fee had not been paid despite issuance of a notice by the Registrar in form O-3, the Registrar may remove the trade mark from the register and advertise the fact forthwith in the journal. The question should not be approached from any penal point of view - If restoration was just, it is bound to be made - That was the effect of the scheme of the Act and the Rules - It was true there had been an inordinate delay - If that delay had led to registration of the trade mark in favour of someone else, it may ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... arned Counsel for the petitioner, submitted that the impugned order is contrary to section 25 of the Act and in particular sub-section (3) thereof and Rule 64(1) of the Trade Marks Rules, 2002. (A) Section 25 reads as under :- 25.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 fe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ner's trade mark from the register. The first respondent's failure to do so renders the removal of the mark from the register illegal. He further submitted that the removal of a trade mark from the register entails civil consequences for the registered proprietor thereof. In the scheme of things, the removal of the registered trade mark cannot be done without prior notice to the registered proprietor of the trade mark. 6 Mr.Desai's submissions are well founded. They are supported by the judgment of a learned single Judge of the Delhi High Court in the matter of Malhotra Book Depot V/s. Union of India Ors reported in 2012 (49) PTC 354 (Del.). The facts there were similar to the present petition. The Delhi High Court while allowing the petition and issuing a mandamus to the respondent to grant restoration and renewal of the trade mark analyzed the scheme of the 1958 Act and the Rules made thereunder, observed as under:- 14. ............................................................................. Analysis of Section 25 of the aforesaid Act shows that a trade mark registered under the said Act may be renewed from time to time for periods of seven years each on making of a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nic and illegal. 7 The judgment was affirmed in appeal 2013(54) PTC 165(Del). The Division Bench confirmed that removal of the trade mark from the register without following the mandatory procedure under Section 25(3) is bad. Paragraph-16 of the judgment reads as under :- 16. The scheme of the Rules regarding renewal of registration and restoration also suggests so. Rule 66 permits an application for renewal of registration to be made any time within six months before the expiration of the last registration. However the removal for non-renewal has not been made automatic. If the registered proprietor does not make an application for renewal till two months prior to the expiration of the last registration, the Registrar is required to notify the registered proprietor of the approaching expiration (under Rule 67) and is to remove the trademark from the register only thereafter, as is evident from Rule 68 having been placed after Rule 67. If removal pursuant to nonrenewal was to be de hors the notice for removal, Rule 68 would have followed Rule 66 and not Rule 67. Though Rule 68 permits removal upon expiration of last registration and non-payment of renewal fee and does not make ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the requisite notice was sent to the petitioner. There are no circumstances that warrant an inference to that effect. Considering the consequences of the impugned order we are not inclined to speculate in this regard in the respondents' favour. 13 Mr. Joshi also contended that the petitioner ought to be relegated to the alternate remedy of filing an appeal under Section 91 of the Act. 14 Mr. Desai however, submitted that section 91 is inapplicable as no order or decision of the registrar has been communicated to the petitioner. 15 It is not necessary for us to decide this issue. In any event the failure to comply with the mandatory provisions of Section 25(3) is a jurisdictional issue which raises a pure question of law. We are therefore, inclined to entertain this petition in exercise of our extra ordinary jurisdiction under Article 226 of the Constitution of India. 16 The question in our view should not be approached from any penal point of view. If restoration is just, it is bound to be made. That is the effect of the scheme of the Act and the Rules. It is true there has been an inordinate delay. If that delay has led to registration of the trade mark in favour of someo ..... X X X X Extracts X X X X X X X X Extracts X X X X
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