Failure to comply with statutory notification requirements before trademark removal invalidates such actions.

Order

01/07/2025

1. The instant writ petition has been filed by the petitioner with the following prayer:-

“Issue a writ or mandamus or any other suitable writ, order or direction in nature of mandamus directing the respondent to grant registration and /or renewal of petitioners Trade Mark Register No. 857965 dated 25.05.1999;

(ii) Award costs of this petition to the petitioner.

(iii) Issue any other writ, order or direction which this Hon’ble Court may deem just and proper in the facts and circumstances of the case may also be passed in favour of the petitioner.”

2. Learned counsel for the petitioner submits that the respondent allotted a Trade Mark “Lala Ji Diamond Agarbatti” to the petitioner, on an application submitted by him on 25.05.1999 and the aforesaid Trade Mark was valid upto 25.05.2009. Counsel for the petitioner submits that the Trade Mark of the petitioner has been removed by the respondent, without making compliance of the provisions contained under Section 25(3) of the Trademarks Act, 1999 (for short, ‘the Act of 2009’) and the Rule 58 of the Trade Mark Rules, 2017 (for short, ‘the Rules of 2007’). Counsel submits that though, after expiry of the aforesaid period, no application was submitted by the petitioner seeking renewal of the aforesaid Trade Mark but the respondents were under legal obligation to make compliance of the mandatory provisions before removing the Trade Mark from the official record, hence, under these circumstances, interference of this Court is warranted.

3. Per contra, counsel for the respondent opposed the prayer made by counsel for the petitioner and submitted that no valid document has been placed on record by the petitioner in support of his contentions as the documents annexed with the writ petition are not valid for any legal purpose. Counsel submits that even otherwise also the Trade Mark of the petitioner had expired way back in the month of May, 2009 and no application for renewal was submitted by the petitioner for more than a period of seven years, hence, under these circumstances, the respondents have removed the Trade Mark of the petitioner from their official record, and under these circumstances, interference of this Court is not warranted and the instant petition is liable to be rejected.

4. Heard and considered the submissions made at Bar and perused the material available on record.

5. Perusal of the record indicates that the petitioner submitted an application before the respondents for registration of his Trade Mark “Lala Ji Diamond Agarbati” by way of filing an application on 25.05.1999 and the said application was allowed and the petitioner was granted the aforesaid Trade Mark and the same was valid till 25.05.2009. This fact is not in dispute that after expiry of the aforesaid period, no application for renewal was submitted by the petitioner. This fact is also not in dispute that before removing the trademark from the official record, the respondents have failed to comply with the mandatory provision contained under Section 25(3) of the Act of 1999.

6. For ready reference provision contained under Section 25(3) of the Act of 1999 and Rule 58 of the Rules of 2017 are quoted as under:-

“25. Duration, renewal, removal and restoration of registration.—

(1) xxxxx (2) xxxxx (3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark fro