Trademark is an important asset for an organization. People spend their sweat, money and life to create value in a brand, which helps to create a different position in the market for their products with other’s products. Organization registers their trademark to extend their protection from infringer/copycats. The registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered, and seek the relief of infringement in appropriate courts in Jurisdiction of registered proprietor. Once the trademark is registered, it is valid for 10 years from date of application, which can be renewed every ten years, till perpetuity after paying prescribed fee within prescribed period.

Sometimes, in course of expansion plans of businesses or other reason, organization ignorantly skips renewal of their trademarks, which in turn gives them huge blow in term of security, goodwill theft and money as the trademark gets removed due to non-filing of fee.This article discuss the recent Delhi High Court judgement in the matter of  Vijay Kumar Salwani Vs Union of India[1] has analysed the jurisprudence on non-issuance of statutory notice and the effect of removal thereto.

Procedure for Renewal

Trade Marks Act, 1999 (‘Act’) entitles proprietor of trademark to renew the mark for 10 years from time to time, prior to expiry of the mark as per Section 25 of Act, read with Trade Marks Rules, 2017 (erstwhile “Trade Marks Rules, 2002”), which can be summarized as infra:

Trade Marks Rules Due Date for Renewal Form Notice Form Notice Period Before Expiry Date
Trade Mark Rules, 2002 read with Rule 63 and 64 Six month prior to expiry date TM-12 O-3 Not less than one month and not more than three months
Trade Mark Rules, 2017 read with Rule 57 and 58 One year prior to expiry date TM-R RG-3 Not more than six months before the expiry date

So according to above table we can conclude that trademark can be renewed before it’s expiry date by filing prescribed form along with prescribed fee.

Non-filing of renewal fee after expiry date

In such case mark can be restored by filing surcharge fee within one year from expiry date. But after that mark will be removed. Various trademarks were removed for Non-Filing of Renewal fee on prescribed form after publishing public notice dated 24th September 2010 to comply with the Section 25(3) of the Act by inviting “petitions” within two months with respect of the removed trademark in the preceding six months. However, the law doesn’t have any provision of petition but procedure for filing renewal form as described above.

‘Public Notice’ can replace ‘Statutory Notice’?

The question requires deep deliberation on the concept of Notice under statute and the  notice in general is different. If the law prescribes, certain procedure to be followed it cannot be bypassed at the whims and fancies of authority.

Section 25(3) is produced as under:

(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 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:

Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).

Similar issue arose in the matter of Assistant Commissioner of Income-tax v.Hotel Blue Moon [2010] 188 Taxman 113 (SC)[2] held that the non-issuance of notice shall vitiate the assessment done. If the law requires the notice to be issued then the same cannot be ignored. This judgement has been followed in various judgements CIT v. Vardhman Estate (P.) Ltd.[2006] 287 ITR 368 (Delhi) and Deputy CIT v. Mahi Valley Hotels and Resorts[2006] 287 ITR 360 (Guj). The non-issuance of the notice as prescribed under law will make the consequential effect shall be non-est.

Various petitions have been filed from time to time in various High Courts regarding removal of Trade Marks, without issuance of physical notice on prescribed forms by the Trade Mark Registry. Such removal is set aside by the various High Courts by giving relief to the Petitioners but judgement of Hon’ble Delhi High Court in the matter of Vijay Kumar Salwani Vs Union of India[3] has came as Boon to the various stakeholders.

Summarized facts and contentions of the parties were as infra:

The petitioner has challenged the removal of his registered trademark on the ground that the mandatory notice under Section 25(3) of the Trade Marks Act, 1999 has not been issued by the Trademark Registry. Court answered the question in negative on the issue of sustaining the action wrt public notice for removal of trademark. Hon’ble Court held that issuing notice pre-removal is mandatory in nature and registrar is duty bound to issue such notice.

Conclusion :

The Public Notice Dated 24th September 2010 was not in compliance of Section 25(3).  The Hon’ble court held that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.

In that view of the matter, the court orders that Registry shall consider the application for renewal as and when received without raising any technical objection. In all cases where the Trade Marks Registry has removed registered trade mark and the record of mandatory notice under Section25(3) of the Trade Marks Act is not available.

This judgement is welcome as gives sigh of relief to the various owners whose trademark has been removed because of non-renewal. However, this judgement can come to rescue and the trademarks may be renewed in light of this judgement. This judgement shall be applicable across India as there is no conflicting judgement of another High Court and until the matter is challenged before Hon’ble Apex Court and decided otherwise, the same can be relied upon and the trademark can be restored /renewed in light of this judgement.

Authors

Adv. Sushil Tater and Adv.(CA.) Nipun Singhvi are practicing advocate at various Tribunals, High Courts and Supreme Court. They can be reached at advsushiltater@gmail.com and nipunsinghvi@yahoo.com.

[1] WP(C)No. 9270/2015 & CM Appl no. 2120/2015

[2] CIVIL APPEAL NOS. 1198 TO 1203 OF 2010

[3] WP(C)No. 9270/2015 & CM Appl no. 2120/2015

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