IMPORTANT POINT
The central legal point established in the judgment is the interpretation of Section 25(3) of the Trade Marks Act, emphasizing the mandatory nature of the renewal notice and the entitlement of the petitioner to seek renewal of trademarks despite the absence of such notice.

JUDGMENT :

G.S. Kulkarni, J.

1. Rule. Returnable forthwith. Respondents waive service. By consent of the parties, heard finally.

2. This petition under Article 226 of the Constitution of India espouses a cause of action against the Registrar of Trade Marks-respondent no.1, in regard to non-renewal of three trademarks of the petitioner, which according to the petitioner inadvertently could not be renewed and which have continued to remain on the Register of Trade Marks.

3. The relevant facts need to be noted: It is petitioner’s case that it had registered the trade mark “MOTWANE” (for short “the said mark”) under Nos. 312470, 312472 and 312473, which according to the petitioner was renewed by the petitioner upto 17 February, 1983. The said marks are stated to have been in continuous use by the petitioner in its business since 1976.

4. The petitioner contends that post 17 February 1983, the registration of these marks remained to be renewed. However, the marks continued to be reflected as the petitioner’s registered marks in the trade mark register, as seen on the official website of the Registrar of Trade Marks.

5. It is contended that sometime in August 2023, the petitioner conducted a routine search of the status of its registered trade marks, including the trade mark in question, when the petitioner noticed that such trade marks were not renewed since the year 1983. It is contended that also a notice under sub-section (3) of Section 25 of the Trade Marks Act, 1999 read with Rule 58 of the Trade Mark Rules, 2017 was not received by the petitioner from respondent no. 1 in regard to the removal of these marks consequent to the non-renewal of the registration of the said marks. It is in these circumstances, the petitioner through its advocate filed separate applications under the Right to Information Act with the office of respondent no. 1 inter alia seeking details regarding the issuance of any removal notice by respondent no. 1. Such RTI applications were responded by the office of respondent no. 1 inter alia stating that no removal notice was issued, dispatched or delivered by respondent no. 1, in relation to any of the registrations of the subject marks. In these circumstances, the petitioner contends that as no notice under sub-section (3) of Section 25 of the Trade Marks Act was issued to the petitioner and the marks having continued to remain on the register of trade marks, it is an implicit recognition of the petitioner’s legal right to seek renewal of the trade marks, by presenting appropriate renewal applications.

6. It is on such premise, the petitioner through its attorney made an attempt to apply for renewal of the registration of these three marks resorting to the online procedure, however, it was noticed that the online module available on the official website of the Trade Marks Registry, which is generally used for filing all the applications, did not provide any option for such renewal. This according to the petitioner was for the reason that the trade marks were not renewed in time. This stood confirmed by the impugned rejection generated by the system, with a remark which was to the effect that the petitioner’s “Application cannot be renewed (delay of more than one year)”. In these circumstances, the petitioner has approached this Court praying for the following reliefs:

“a) this Hon’ble Court be pleased to issue a Writ of Prohibition or a Writ in the nature of Prohibition or any other Writ, order or direction, restraining respondent no. 1 from removing the petitioner’s said mark “MOTWANE” under the subject Registration Nos. 312470, 312472 and 312473 from the Register of Trade Marks on the ground of non-renewal of the registration.

b) This Hon’ble Court be pleased to issue a Writ of Mandamus or a Writ in the nature of Mandamus or any other appropriate Writ, order or direction directing Respondent no. 1 to restore and renew the petitioner’s said mark ‘MOTWANE’ under the subject registration nos. 312470, 312472 and 31247