Bombay High Court: Registrar's Failure to Issue Notice Preserves Right to Trade Mark Renewal Decades Later

Mumbai: In a significant ruling for intellectual property rights holders, the Bombay High Court has held that a registered trade mark proprietor does not lose the right to renew their mark, even after a substantial delay, if the Registrar of Trade Marks failed to issue the mandatory notice under Section 25(3) of the Trade Marks Act, 1999, before removing the mark from the register.

The judgment, delivered by Justice G.S.Kulkarni , came in a writ petition filed by the owners of the "MOTWANE" trade mark, seeking directions against the Registrar of Trade Marks for non-renewal of three of their marks registered under Nos. 312470, 312472, and 312473.

Case Background: Marks Not Renewed Since 1983

According to the petitioner, their "MOTWANE" marks were last renewed up to February 17, 1983, but were inadvertently not renewed thereafter. Despite the non-renewal spanning several decades, the marks continued to appear as registered in the petitioner's name on the official website of the Registrar of Trade Marks.

In August 2023, during a routine check, the petitioner discovered that the marks had not been renewed since 1983. Crucially, the petitioner contended that they had not received any notice from the Registrar under Section 25(3) of the Trade Marks Act, read with Rule 58 of the Trade Mark Rules, 2017, regarding the potential removal of the marks due to non-renewal.

Using the Right to Information (RTI) Act, the petitioner sought clarification from the Registrar's office, which confirmed that no removal notice had been issued, dispatched, or delivered for the subject registrations.

Based on the absence of the statutory notice and the continued listing of the marks on the register, the petitioner argued they retained a legal right to seek renewal. However, attempts to file renewal applications online were rejected by the system, citing a "delay of more than one year." This rejection led the petitioner to approach the High Court seeking directions for renewal and restraint against removal.

Arguments Presented

Petitioner's Stance: Counsel for the petitioner, Mr. Kamod , contended that the Registrar's rejection based on delay was legally untenable in light of Section 25(3) of the Act. He emphasized that the mandatory notice under Section 25(3) is a prerequisite before the Registrar can remove a mark. Since the Registrar admittedly failed to issue this notice and the marks remained on the register, the petitioner's right to apply for renewal subsisted. Mr. Kamod relied on previous decisions of the Bombay High Court, including Cipla Ltd. vs. Registrar of Trade Marks , Harbans Singh Khanduja & Anr. vs. The Registrar of Trade Marks , and Ipca Laboratories Ltd. vs. The Registrar of Trade Marks , which had recognized the proprietor's right to seek renewal in similar situations where the S.25(3) notice was not issued and the marks were not removed.

Registrar's Position: The Addl. Government Pleader, Ms. Vyas , appearing for the Registrar, opposed the petition, highlighting the petitioner's admitted and substantial delay/laches in renewing the marks since 1983. She argued that the petitioner's default should not be attributed to the Registrar. However, she fairly conceded that no notice under Section 25(3) had been issued and no formal procedure for removing the marks had been initiated by the Registrar. She stated that if the petitioner wished to renew, they must follow the prescribed procedure and pay the requisite fees.

Court's Analysis and Decision

Justice Kulkarni , after considering the arguments and perusing the record, found "much substance" in the petitioner's contentions. The Court acknowledged the petitioner's significant delay in seeking renewal but underscored the critical lapse on the part of the Registrar.

The Court meticulously examined Section 25 of the Trade Marks Act, particularly sub-section (3). It highlighted that S.25(3) mandates the Registrar to "shall send notice" before the expiration of the registration, intimating the proprietor about the expiration date and renewal conditions. Only "if at the expiration of the time prescribed... those conditions have not been duly complied with," the Registrar "may remove the trade mark from the register." The proviso to S.25(3) further states that the Registrar "shall not remove" the mark if an application with prescribed fees and surcharge is made within six months from expiration.

The Court reasoned that the absence of the mandatory notice under S.25(3), coupled with the fact that the marks were never formally removed from the register and continued to be listed, meant that the proprietor's right to seek renewal had not been extinguished. The Court termed this a "two-way lapse" – the proprietor's failure to renew and the Registrar's failure to issue the notice and remove the mark – concluding that this mutual lapse should not disadvantage the registered proprietor.

Pivotal to the ruling, the Court stated: "...once such notice under sub-section (3) was not issued and the trade mark had continued to remain on the register... it would be implicit, that in such situation... 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..." And further: "...sub-section (3) of Section 25 cannot be interpreted to mean that in the absence of a notice under sub-section (3) of Section 25 being issued to the registered proprietor, the right of renewal of the registration of the trade mark can be presumed to have extinguished or lost by the registered proprietor in any manner."

The Court found that the online system's rejection based on delay was contrary to the clear provisions of S.25(3) and the principle established by previous judgments, which uniformly held that the absence of the S.25(3) notice preserves the proprietor's right to renew.

Accordingly, the Bombay High Court allowed the petition. The impugned online rejections were quashed and set aside. The Court held that the petitioner is entitled to maintain applications for renewal and directed the Registrar to consider and grant these applications in accordance with law, subject to the petitioner completing other procedural requirements and paying the prescribed fees. The petitioner was granted a period of two weeks to make the requisite applications, and the Registrar was directed to process them within two weeks thereafter.

The ruling reinforces the statutory obligation of the Registrar of Trade Marks under Section 25(3) and provides relief to proprietors whose marks, despite non-renewal, were never formally removed due to the Registrar's administrative lapse in issuing the mandatory notice.

Case: G.S.Kulkarni , J.