Rajasthan High Court: In a civil writ petition, filed by the petitioner against the removal of the Trade Mark by the respondent from their official record, a Single-Judge Bench of Anoop Kumar Dhand, J., held that the removal of a registered trade mark from official records without issuing a mandatory notice under Section 25(3) of the Trade Marks Act, 1999 (‘Act’), and Rule 58 of the Trade Mark Rules, 2017 (‘Rules’), was not sustainable in the eyes of law. The Court quashed the removal, directing the respondents to pass an appropriate fresh order after compliance with the afore-stated provisions.
Background:
The petitioner had applied for the registration of the trade mark “Lala Ji Diamond Agarbatti” on 25-05-1999. This trade mark was allotted to the petitioner and remained valid until 25-05-2009. Following the expiration of the trade mark’s validity period, the petitioner did not apply for its renewal. Subsequently, the respondent removed the said trade mark from its official records, without complying with the mandatory provisions contained in Section 25(3) of the Act and Rule 58 of the Rules. The petitioner had filed the present petition for the grant of registration or renewal of the trade mark.
The respondent contended that the petitioner had not placed any valid documents on record to support his contentions. Furthermore, the respondent argued that the trade mark had expired way back in May 2009, and no renewal application had been submitted by the petitioner for more than seven years, thereby justifying the removal of the trade mark from the official record.
Court’s Analysis:
The Court observed that before removing the trade mark from the official record, the respondents had failed to comply with the mandatory provision contained under Section 25(3) of the Act which mandates the Registrar to send a prescribed notice to the registered proprietor before a trade mark’s expiration, detailing the expiry date and renewal conditions. Further, as per Rule 58 of the Rules, this notice, in Form RG-3, is to be sent not more than six months before expiration, enabling renewal or potential removal if conditions are unmet.
The Court, after perusing these provisions, concluded that it was mandatory for the respondents to comply with them and the authorities were legally obligated to issue a notice in Form O-3/RG-3 informing the registered proprietor of the date of expiry and the conditions for renewal. The respondents had not undertaken this essential exercise.
The Court held that since the respondents had failed to comply with the afore-stated mandatory provision, their action of removing the registered trade mark of the petitioner from the record was not sustainable in the eyes of the law and liable to be set aside. The Court further held that the respondents were at liberty to pass an appropriate fresh order, after compliance with the provisions contained under Section 25(3) of the Act and Rule 58 of the Rules. The Court further held that any fresh order passed by the respondents must be strictly in accordance with law and after providing due opportunity of hearing to the petitioner. It was also clarified that in case the petitioner applies for renewal of the trade mark before the respondents, the respondents were obligated to decide the same strictly in accordance with law.
[Jitendra Goyal v. Registrar of Trade Marks, 2025 SCC OnLine Raj 3294, decided on 01-07-2025]
Advocates who appeared in this case:
For the Petitioner: G.D. Bansal with Dharmendra Kumar Gupta, K.K. Pancholi, Advocates
For the Respondent: Mohit Balwada, Advocate