IP Case Law › Trade Marks › Amrit Singh Mehta trading as Mehta Cosmetics v. Controller G…
Relevant Acts and provisions
Trade Marks Act, 1999
Trade Marks Rules, 2002
Provisions considered: Section 25(3) of the Trade Marks Act, 1999; Rule 64(3) of the Trade Marks Rules, 2002; Article 226 of the Constitution of India.
Brief facts
The mark BLUE CHIPS was registered under Class 3 on 3 August 2005, on an application filed by the Petitioner on 21 July 1992. The Petitioner claimed that he did not receive the registration certificate and hence was unaware that renewal was required. The trade mark was removed from the register due to non-renewal and treated as expired. Through an RTI request the Petitioner sought details regarding dispatch of the registration certificate and renewal notice; the Trade Marks Registry was unable to establish that either the registration certificate or the mandatory renewal notice in Form O-2 or O-3 had been sent. A writ petition was filed under Article 226 of the Constitution of India seeking restoration of the mark.
Issues before the Court
- Whether the Petitioner could be held responsible for not renewing the trade mark when the registration certificate had not been received.
- Whether the trade mark could be removed from the Register without sending the mandatory renewal notice in Form O-2 or O-3.
- Whether the Petitioner was entitled to the six-month renewal period available when registration is granted after the normal renewal date.
Court's findings
A proprietor should not lose trade mark rights because of a failure on the part of the Registry to communicate the registration or issue the mandatory renewal notice. Procedural requirements relating to renewal and removal must be followed before a trade mark is removed from the Register.
Decision
The Court found a violation of Section 25(3) of the Trade Marks Act, 1999 and held that the Petitioner could not be blamed for failure to renew when he had received neither the registration certificate nor the mandatory renewal notice. The Court directed restoration of the trade mark and permitted the Petitioner to file the renewal application with the prescribed fees and formalities.
Key legal principle / ratio
Where a trade mark is registered after its normal renewal date, the proprietor is entitled to a six-month period from the actual date of registration to seek renewal. Further, a trade mark cannot be removed for non-renewal without first issuing the mandatory notice in Form O-2 or O-3 as prescribed under Section 25(3).
Keywords
Form O-2 Form O-3 Registration Certificate Removal of Trademark Renewal Restoration of Trademark Section 25(3) Writ Petition
Read the judgment
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