A trademark cannot be removed from the Register without compliance with the prescribed procedure, and denial of consideration of application for renewal without issuing the mandatory notice in Form O-3 is impermissible.

JUDGMENT :

V. KAMESWAR RAO, J.

1. The present petition has been filed with the following prayers:-

“It is, therefore, respectfully prayed that the Hon’ble Court may be pleased to issue an appropriate Writ of Mandamus or any other Writ or direction to the Respondents.

(a) To set aside the Communication dated 15.07.2015 passed by the Ld. Registrar of the Trade marks dismissing the Form TM-12 of the Petitioner in respect of registration No.473696 in class 25;

(b) To allow filing of the TM-12 in respect of registration No. 473696 in class 25;

(c) To allow the Form-12 so filed by Petitioner and issue renewal Certificate to the Petitioner in respect of registration No. 473696 in class 25;

(d) Any other or further writ or direction which this Hon’ble Court may deem fit and proper in the facts and circumstances of the case be also passed by the Hon’ble Court in favour of the Petitioner and against the Respondents.”

2. It is the case of the petitioner and contended by Mr. Shailen Bhatia that petitioner has been trading as M/s Kiran Textiles and vide application dated June 15, 1987, applied for registration of Trademark “BINACA” for category of goods included under Class 25, under Trade & Merchandise Marks Act 1958. Said mark, being valid for seven years would have first become due for renewal in 1994. However, since the same had not yet been notified in the Trademark Journal, no such steps were taken by the petitioner. The petitioner’s application and mark were first published on December 16, 1995 and finally registered vide certificate dated March 12, 1998. The petitioner therefore first filed the renewal fee in 2001 (being seven years from date of actual publication in the Journal). With enactment of Trademarks Act, 1999, the said period of seven years was increased to ten years.

3. It is the petitioner’s case that after 2001 despite efforts in ascertaining status of his mark, the actual date of expiry of the petitioner’s mark was not informed to him. He would draw my attention to online status report as regards his mark (report dated May 26, 2015 at page 52 of the paper book). It is his case that Section 25(3) of the Act of 1999 and Rule 64(1) of the Trademark Rules, 2002 require the Registrar of Trademarks to first issue notice in Form O-3 to the registered proprietor of the concerned mark i.e due to expire (Rule 58 of Trademark Rules, 2017 is in pari-materia with Rule 64).

4. It is stated that some time in May 2015, the petitioner saw the status of registration of his mark on the website of respondent No.2 and then realized that the renewal of the said mark was due. Consequently, on June 08, 2015 the petitioner filed an application for renewal of the said registration in Form TM-12 with the Registrar of Trademarks, New Delhi. However, vide order dated June 15, 2015, the respondent has been pleased to reject the said application for renewal as being time barred. It is therein noted “as per renewal section last fee for renewal filed in 2001. Thereafter, no fee was filed. Hence, TM-12 is time barred, so returned herewith with fee.”

5. It is the petitioner’s case that having not received the intimation/notice as mandated by Section 25(3) of the Act read with Rule 64(1) of the Rules of 2002, the respondent has erred in unilaterally rejecting the petitioner’s application for renewal vide the impugned order. Mr. Bhatia would rely on the judgment of the Single Bench of this Court in Malhotra Book Depot vs. Union of India and Ors., W.P. (C) 7882/2010 which was upheld by the Division Bench of this Court in LPA 564/2012, Union of India and Ors. v. Malhotra Book Depot.

6. Learned counsel for the respondent would at first instance challenge the maintainability of the present petition in light of Section 91 of the Act, inasmuch as it is provided therein that an appeal against the order of the Registrar would lie to the Appellate Board. Reliance is placed on Paul Manufacturing vs. Assistant Registrar (2006) 32 PTC 285 (Del). Moreover, according to him, the