TM Renewal: Sending of O-3 Notice Mandatory Prior to TM Removal

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January 19, 2018

Kleenage Products (India) Private Limited v. The Registrar of Trademarks & Ors. (Bombay High Court)

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Date of Judgment: January 18, 2018

In this case, the Bombay High Court has reiterated the settled principle of Trademark Law that a mark cannot be removed from the register of trademarks for non- renewal unless the Registrar of Trademarks has sent O-3 Notice to the registered proprietor of the mark.

The petitioner in the case was aggrieved by removal of its registered trademark KLITOLIN for non-renewal by the Respondent from Register of Trademarks and accordingly prayed that the Court directs Respondent to allows restoration and renewal the impugned mark.

In the case, the impugned trademark was due for renewal on 21.08.2009. However, inadvertently, petitioner did not tender application for renewal. It is the contention of the petitioner that the respondent also failed to issue the requisite mandatory notice in Form O-3 to the registered proprietor under Section 25(3) of the Trade Marks Act, 1999.

The Petitioner in the case contended that since the respondent had failed to issue O-3 notice, which was a statutory requirement, the respondent should allow restoration and renewal of the said trademark.

The respondents contended that the communication of renewal i.e. O-3 notice under Section 25(3) of the Trade Marks Act, 1999 in respect of the impugned trademark does not appear on record and is not traceable

The petitioner, placing reliance on the judgment in the matter of, Cipla Limited Vs. Registrar of Trade Marks and another contends that respondent No.1 is mandatorily required to issue a notice in Form O-3 and in the absence of issuance of such notice or production of record indicating issuance of such notice, the trademark in question cannot be removed from the register.

Bench’s Verdict and Observations

The Bombay High Court in the case while allowing the Petitioner’s pray made the following observations in the case:

  1. Notice on Form O-3 before removal of trademark from Register– That 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)[1] and is to remove the trademark from the register only thereafter.
  2. That if removal pursuant to non-renewal was to be de hors[2] 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 fees and does not make the same dependent upon compliance of Rule 67 but to read Rule 68 permitting removal de hors compliance of Rule 67 would be contrary to Section 25(3) of the Trade Marks Act, 1999 which as aforesaid permits removal only if at the expiration of the time prescribed in the notice required to be sent thereunder, the registered proprietor has not applied for renewal.
  3. Absence of documentary evidence relating to O-3 Notice- With reference to the instant case, the Court observed that respondent contended that the record in respect of issuance of O-3 notice is not traceable. In context reference was made to the case of Court Receiver, High Court, Mumbai vs. Registrar of Trademarks and another[3], wherein Division Bench of Bombay High Court held that in the absence of any reliable evidence in support of the stand taken by the respondent that O-3 notices were sent, it was difficult to accept the contention that the O-3 notices were duly sent.
  4. That in the absence of documentary evidence in respect of the contentions raised by the respondent, it cannot be concluded that such notices were sent and the petitioner is in receipt of the same.

Read the entire case here.

Sending of O-3 Notice Mandatory Requirement Prior to Removal of Trademark

In the case of Cipla Limited Vs. Registrar of Trade Marks and another (2013) the Bombay High Court elucidated on the law relating to Trademark Renewal in India. The Court stated that the Scheme of the Act and Rules is that before the removal of the mark from the register, the Registrar must give prior notice in form O-3 to the registered proprietor putting them to notice of the impending expiry of registration 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 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 Trade marks without complying with Rule 67.

Removal of the registered mark from the register without complying with the mandatory requirements of Section 25(3) of the aforesaid Act read with Rule 67 of the aforesaid Rules would itself be laconic and illegal.

Also read Trademark Renewal in India: Law and Legal Implications

 

[1] Rule 58 of New Trademark Rules, 2017- It provides for notice before removal of trademark from Register

[2] To be outside the scope of

[3] Writ Petition No.1259 of 2015