Notice Under Section 25(3) of the Trade Marks Act Is Mandatory Before Removing a Trade Mark: Rajasthan High Court
Notice Under Section 25(3) of the Trade Marks Act Is Mandatory Before Removing a Trade Mark: Rajasthan High Court
Introduction
The Rajasthan High Court has held that a registered trade mark cannot be removed from the Trade Marks Register without issuing a mandatory notice under Section 25(3) of the Trade Marks Act, 1999, and Rule 58 of the Trade Marks Rules, 2017.
Factual Background
The petitioner had applied for the registration of the trade mark "Lala Ji Diamond Agarbatti" on May 25, 1999. The trade mark was granted and remained valid until May 25, 2009. However, the petitioner did not apply for its renewal within the prescribed or extended period, and the respondent removed the trade mark from the register without complying with the mandatory procedural requirements.
Procedural Background
The petitioner filed a civil writ petition challenging the removal of the trade mark. The respondent contended that the petitioner had not produced any valid documents in support of his claim and that the trade mark had expired in 2009 due to non-renewal.
Contentions of the Parties
Petitioner’s Contentions: The petitioner argued that the removal of the trade mark was unlawful as it was carried out in violation of Section 25(3) of the Act and Rule 58 of the Rules, which mandate prior notice before such removal.
Respondent’s Contentions: The respondent asserted that the trade mark had not been renewed for over seven years, and no renewal application or fee had been submitted by the petitioner, thus justifying its removal.
Court’s Analysis
The Bench of Justice Anoop Kumar Dhand observed that under Section 25(3) of the Act, the Registrar is required to issue a prescribed notice to the registered proprietor before the expiration of the registration, clearly mentioning the expiry date and conditions for renewal. Further, under Rule 58, such notice must be issued in Form RG-3, and not earlier than six months before the expiry date.
The Court noted that no such notice was issued in this case prior to the removal of the trade mark, thereby violating the mandatory provisions of the law.
Reasoning & Analysis
The Court held that the removal of the registered trade mark without issuance of mandatory notice was not legally sustainable. It further directed the respondent authority to pass a fresh order after strictly complying with Section 25(3) of the Act and Rule 58 of the Rules.
Implications
The ruling reinforces the importance of adhering to procedural safeguards under the Trade Marks Act. Failure to issue statutory notices before removal of a trade mark can render such action void and subject to judicial review.
Outcome
The Court quashed the impugned removal order and directed the respondents to pass a fresh order in accordance with law, after affording due opportunity of hearing to the petitioner.
In this case, the petitioner was represented by Mr. G.D. Bansal along with Mr. Dharmendra Kumar Gupta and Mr. K.K. Pancholi, Advocates. Meanwhile, the respondent was represented by Mr. Mohit Balwada, Advocate.
