The main legal point established in the judgment is the importance of justifying undue delay in seeking renewal of a trademark and the necessity of compliance with statutory provisions.

JUDGMENT :

Amit Bansal, J.

The present petition has been filed seeking a direction to the respondent/Registrar of Trade Marks to restore the Trademark Application No. 576003 in class 28 filed on behalf of the petitioner.

2. As per the facts stated in the petition, the trademark “TIGER” (device) was registered in favour of the petitioner in class 28 on 26th June, 1992. A renewal application was filed in June, 1999 and the renewal was granted for a period of seven years expiring on 26th June, 2006. Thereafter, the petitioner did not apply for any further renewal. After a hiatus of sixteen years, the petitioner tried to file a renewal application through online mode in April, 2022. Upon not being successful, the petitioner filed an RTI application on 26th April, 2022. A response was received to the said RTI application, wherein it was stated that O 3 notice as mandated under Rule 58 read with Section 25(3) of the Trade Marks Act, 1999 was generated on 21st March, 2016, however, details thereof were not traceable. Subsequent requests were made on behalf of the petitioner on 23rd August, 2022 and 13th September, 2022 seeking renewal of the mark, which were not acceded to.

3. Accordingly, the present writ petition has been filed on behalf of the petitioner.

4. Notice in the petition was issued and accepted on behalf of the respondent on 6th January, 2023.

5. Counsel for the respondent states that he does not wish to file a reply and shall make oral submissions.

6. Counsel for the petitioner has relied upon the judgment of a Division Bench of this Court in Union of India v. Malhotra Book Depot, 2013 SCC OnLine Del 828 in support of his submission that the requirements under Section 25(3) are mandatory and if the Registry did not adhere to the aforesaid statutory provisions, the renewal has to be granted in favour of the applicant even if the said renewal is claimed after a lapse of several years.

7. Per contra, counsel for the respondent submits that the aforesaid judgment is not applicable in the facts and circumstances of the present case as in the judgment before the Division Bench, there was a clear conclusion that the notice under Form O 3 was not issued. The relevant portion of the said judgment is set out below:

“21. The learned Single Judge on the basis of the pleadings in the writ petition has concluded that in the present case no notice in Form O-3 has been given. We see no reason, in exercise of appellate jurisdiction and in the absence of anything to the contrary being shown, to interfere with the said conclusion of the learned Single Judge in exercise of discretionary powers under Article 226 of the Constitution of India.

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26. In the light of the view which we have taken, that removal without following the mandatory procedure prescribed therefor is bad, the judgment of the Supreme Court in Administrator, Municipal Committee, Charkhi Dadri (supra) relied upon by the appellants is of no application. Moreover, the Supreme Court in that case held that once acquisition had become final and the title to the land stood divested, the subsequent non-compliance could not undo what already stood done. However, in the present case, we are concerned with different statutory provisions whereunder according to us removal had not attained finality owing to the procedure prescribed therefor having not been followed. The appeal therefore fails and is dismissed save that the direction given in the impugned judgment to the Registrar to restore and renew the mark is modified to a direction to the Registrar to restore/renew the mark after satisfying that the respondent is the registered proprietor/successor of the registered proprietor of the registered trademark which has expired and that in the interregnum same or similar marks have not been registered.”

8. There is no dispute with the legal position that a mark cannot be removed from the Register of Trademarks without compliance with the provisions of Section 25(3) of the Trade Marks Act,