The Bombay High Court recently allowed a petition seeking prohibition of removal of their trademark ‘KLITOLIN’ from the records of the register of trademarks and held that any such removal can only be possible if prior notice, mandatory under Section 25(3) of the Trade Marks Act 1999, has been given.
The bench of Justice RM Borde and Justice RG Ketkar heard the petition filed by Kleenage Products Private Ltd, a company engaged in manufacture and sale of washing and cleaning preparations.
The petitioner had applied for registration of trademark ‘KLITOLIN’ which was accepted and from 1988 to 2009, the said trademark was renewed multiple times. The trademark was due for renewal on August 21, 2009, but the petitioner failed to tender application for renewal.
It was, thereafter, revealed that the trademark is likely to be removed from the register.
Submissions and Judgment
The petitioner contended that the Registrar of Trademarks (respondent No.1) also failed to issue the requisite mandatory notice in Form O-3 to him (the registered proprietor) under Section 25(3) of the Trade Marks Act, 1999.
Counsel for the petitioner Hiren Kamod submitted that because respondent No.1 has failed to issue the mandatory O-3 notice, restoration ought to be allowed. He placed reliance on the judgment of a division bench of the high court in Cipla Limited v Registrar of Trade Marks and Another, wherein it was held:
The Registrar must give prior notice in form O-3 to the registered proprietor or to each of the joint registered proprietors in writing, putting them to notice of the impending expiry of registration of the mark. The removal of the registered mark from the register entails civil consequences for the registered proprietor 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 judgment further stated:
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 Trademarks without complying with the mandatory procedure prescribed in Section 25(3) of the aforesaid Act or read with Rule 67 of the aforesaid Rules.
Thus, the court allowed the petition and directed the Registrar to consider the application of the petitioner for renewal of trademark.