S.25(3) Trademarks Act | Registrar Can't Refuse To Renew Mark On Grounds Of Delay If Not Removed From Register After Issuance Of Notice: Bombay HC

The Bombay High Court held recently that the Trademark Registrar cannot refuse to renew a trademark on the grounds of delay if it has not been removed from the register after issuance of removal notice under section 25(3) of the Trademarks Act, 1999.

A division bench of Justice GS Kulkarni and Justice Firdosh P Pooniwalla directed the Registrar to renew three of the petitioners' trademarks, which inadvertently remained on the Trade Marks Register despite lapse in renewal.

“When there is a two-way lapse, that is, a lapse not only on the part of the registered proprietor in not making an application for renewal of registration, but also a lapse on the part of respondent no. 1 (Registrar), in not issuing notice of removal of the trade mark, the result would be, that the mark although not renewed would continue to remain on the register of respondent no.1, shown as the mark of the registered proprietor. In these circumstances, certainly an opportunity is available to the registered proprietor to make an application for renewal, for the reason that the mark is not removed from the register of trade marks, maintained by the Registrar.”

The court allowed the writ petition filed by the trademark proprietor challenging the non-renewal of its trademarks.

The petitioner had registered the trademark "MOTWANE" under numbers 312470, 312472, and 312473, and duly renewed the trademark until February 17, 1983.

However, it was stated that after this date, the petitioner did not renew the registration, although the trademarks continued to be listed in the Trade Marks Register. The petitioner, upon routine inspection in August 2023, discovered this discrepancy and further found that no removal notice had been issued by the Registrar, as required under Section 25(3) of the Trade Marks Act, 1999.

Subsequent attempts to renew the trademarks through the online portal were unsuccessful, as the system flagged a delay of more than one year, rendering the applications ineligible for renewal.

Thus, the petitioner approached the Bombay High Court in the present petition seeking a writ of prohibition to prevent the removal of their trademarks from the register and a writ of mandamus to compel the Registrar to restore and renew the said trademarks.

Advocate Hiren Kamod for the petitioner argued that despite the delay in renewal, the petitioner still retained the legal right to seek renewal, as no removal notice was issued by the Registrar.

Special Counsel Shruti Vyas for the Union of India argued that the delay was fatal to the petitioner's case. However, she conceded that no removal notice was issued, and if the petitioner intended to renew the trademarks, they must follow the prescribed procedure.

Section 25(3) of the Trade Marks Act provides that before the expiration of the last registration of a trade mark, the Registrar “shall” send notice in the prescribed manner to the proprietor of the date of expiration and the conditions such as payment of fees etc. for renewal of registration. It further provides that if at the expiration of the prescribed time, those conditions are not met, the Registrar may remove the trade mark from the register. The proviso to the section provides that the Registrar shall not remove the trade mark, if an application is made and fee and surcharge is paid within six months from the expiration of the last registration, and shall renew the registration of the trade mark for ten years.

The court held that it was mandatory for the Registrar to send notice in the prescribed manner to the proprietor, intimating the date of expiration, and the conditions regarding payment of fees and otherwise, upon which, the registration could be renewed. Only on the expiration of the time prescribed in the notice and if the conditions aren't met, would the Registrar be authorised to remove the trade mark from the register, the court held.

The court observed that the absence of a removal notice from the Registrar implied the continuation of the petitioner's right to seek renewal.

Thus, the court allowed the petition, quashing the communication rejecting the petitioner's renewal applications and directing the Registrar to consider and grant the renewal subject to procedural requirements.

Case no. – Writ Petition (L) No. 30537 of 2023

Case Title – Motwane Private Ltd. v. Registrar of Trade Marks and Anr.

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