Trade Mark Registry required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from the register: Delhi High Court

Recently, in an order passed by the Delhi High Court in the case of Vijay Kumar Salwani vs. Union of India, Hon’ble Justice JR Midha held that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.

BRIEF FACTS

• The Petitioner in this case is Vijay Kumar Salwani trading as M/s Modern Namkeen Bhandar.
• The Petitioner challenged the removal of its registered Trade Mark without issuance of a mandatory notice under Section 25(3) of the Trade Marks Act, 1999 and sought for his mark to be reinstated, and the said removal to be set aside.
• The Trade Marks Registry submitted that a public notice dated 24th September, 2010 had been issued inviting petitions regarding marks that had been removed in the preceding months. Petitioners mark was presumed to have been abandoned as no representation from his side was received, the mark was removed.
• The Registry further submitted that it had issued a notice under Section 25(3) to the Petitioner, but it did not have proof of serving such notice.

PETITIONER’S CONTENTIONS

• The Petitioner, Vijay Kumar Salwani, challenged the removal of his registered trademark from the Register of Trade Mark without having been issued a mandatory notice under Section 25(3) of the Trade Marks Act, 1999. The Petitioner’s mark was removed on the grounds of non-renewal, however he had not received any notice under Section 25(3) which is a mandatory requirement.

RESPONDANT’S CONTENTION

• Learned standing counsel for Central Government, Mr. Akshay Makhija, submitted that the notice under Section 25(3) of the Trade Marks Act, 1999 was issued by the department but the record of the notice is not available.

COURTS ANALYSIS

• The Court was of the view that Section 25(3) of the Trade Marks Act is mandatory and the Trade Mark Registry is required to send a mandatory notice under Section 25(3) of the Trade Marks Act before removing a trade mark from register.
• The Court further stated that the removal of the registered Trade Mark by the Trade Mark Registry is liable to be set aside and the department is at liberty to issue fresh notice under Section 25(3) of the Trade Marks Act, 1999.
• In all cases where the Trade Marks Registry has removed registered trade mark and the record of mandatory notice under Section 25(3) of the Trade Marks Act is not available, , the Registry was ordered to consider the application for renewal as and when received without raising any technical objection.

RELEVANCE OF SECTION 25(3) OF THE TRADE MARKS ACT, 1999

• Section 25(3) is as follows:

  (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 from the register:

  Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section.

• The Registry is mandated to send a notice as per Section 25(3) of the Act with respect to the date of expiry and conditions for renewal to the registered proprietor of a registered trademark when the said mark is approaching the end of 10 years period. The same is prescribed by Section 25(3) of the Act, as well as Rule 58 of the Rules. The significance of the section is emphasizes by Rule 58, of the Trade Mark Rules, 2017 wherein it states that the Registrar shall send a notice at the address of service
• Section 25(3) is mandatory in nature, and the same has been iterated in various judgements over the years. The Delhi High Court in Union of India v. Malhotra Book Depot 2013 (54) PTC 165 (Del) (DB) delivered a judgement on the same lines streamlining the focus on the mandatory nature of the said section.
• The Vijay Kumar Salwani v. UOI order reiterates and reinstates the binding and obligatory nature of Section 25(3) and clarifies that a “public notice” does not qualify as a statutory notice as is to be served by the registry compulsorily.