The judgment established the mandatory nature of the statutory procedure for renewal and restoration of a trade mark, emphasizing the importance of following the prescribed steps and issuing the notice in compliance with the Trade Marks Act.

JUDGMENT :

Pushpa Sathyanarayana, J. –

1. The prayer in the writ petition is to direct the first respondent, the appropriate authority to receive the petitioner's renewal application dated 15.12.2015 for renewing the Trade Mark "TAJMAHAL" Indian Pappad registered under No.1077334 in Class 30 and renew the same in accordance with due process of law.

2. The petitioner firm is engaged in the business of manufacturing, marketing and exporting pappads and had adopted the trade mark 'TAJMAHAL' for their products. The said trade mark has been used by them continuously and extensively from 01.04.1970 and had attained a high reputation and turnover. The petitioner's trade mark TAJMAHAL was advertised in the Trade Mark Journal dated 16.08.1982. However, it was not renewed and the same lapsed. Later, after the petitioner took over the firm from his mother in 1985 and became the sole proprietor of the firm, he changed the design of the label and applied for registration of the changed trade mark TAJMAHAL Indian Pappad on 01.02.2002 by Application No.1077334 in class 30 for the revised label TAJMAHAL claiming to be using the same from 01.04.1985. The same was accepted and published in the Trade Mark Journal on 15.03.2006 and the registration certificate was issued on 19.02.2007.

3. The petitioner found out the infringement of goods of Pappad sold in Kwait identical to his Trade Mark "TAJMAHAL" during October 2014, and therefore, sent a notice on 10.10.2014 to the infringer through his attorney. Only while receiving the reply notice from the infringer, the petitioner learnt that the Register No.1077334 was not renewed within time. The said Trade Mark Registration Certificate dated 01.02.2002 was issued only on 19.02.2007 and he was told that the Trade Mark has to be renewed after 10 years. However, the website of the Trade Mark Registry www.ipindia.nic.in reflected the status of the Trade Mark TAJMAHAL Indian Pappad as "registered", and only on verification, it was learnt that the Trade Mark was not renewed and the petitioner was asked to submit a copy of the renewal intimation/registration certificate/extract of the journal, wherein, the application was advertised with registration charges, etc.

4. Thereafter, a fresh application for renewal of the trade mark was made on 15.12.2015, but the Registrar of the first respondent refused to receive the application, as the last date for filing the renewal application expired on 31.01.2013, that is, the registration of the mark should be treated from the date of application on 01.02.2002, the registration is for ten years and may then be renewed for a period of another ten years within one year of the expiry of the certificate term. Hence, this petition.

5. It is submitted by the learned counsel that though the website showed the status for the petitioner's trade mark as "registered", the respondent, for all practical purposes, had treated the mark as "removed" thereby refusing to accept the renewal application of the petitioner. Therefore, it was contended that the Trade Mark Registry ought not to have refused to receive the application for renewal of the mark, when the status is reflected only as "registered".

6. It is also alleged that the notice of the renewal by the Trade Mark Registry under Section 25(3) of the Trade Mark Act, 1999 (in short "the Act") was not received by the petitioner in Form O-3, that is, the first respondent has not issued the notice, which they ought to have issued. Hence, due to the inaction on the part of the authorities in not issuing the statutory and mandatory notice, the petitioner is put to loss and unable to renew the trade mark and the alleged expiry of the trade mark is adversely affecting the petitioner. Learned counsel for the petitioner placed his reliance on Union of India vs. Malhotra Book Depot, 2012 (49) PTC 354 (Del.).

7. Heard the learned counsel on either side and perused the materials available on record.

8. A reading of Section 25(3) of the Act, which pro