Arun Kumar Gupta v. Registrar of Trade Marks

Relevant Acts and provisions

Trade Marks Act, 1999

Section 25(3)

Provisions considered: Section 25(3) of the Trade Marks Act, 1999.

Brief facts

The trade mark ODEON was registered in the name of the Petitioner's predecessor, Mr. Ram Kumar Gupta, in Class 11 and renewed up to 21 December 2008. The predecessor died on 29 February 1992 and the Petitioner, his son, filed Form TM-24 on 30 October 2001 to transfer the trade mark into his name. The Petitioner contended that the Registrar did not issue the mandatory renewal notice in Form O-3 under Section 25(3) of the Trade Marks Act, 1999. Consequently the renewal application was not filed and the trade mark was removed from the Register. The Petitioner approached the Delhi High Court seeking restoration.

Issues before the Court

1. Whether a trade mark can be removed from the Register for non-renewal without sending the mandatory renewal notice in Form O-3 to the registered proprietor?
2. Whether the Petitioner's delay in approaching the Court could prevent restoration when the mandatory Form O-3 notice had not been issued?

Court's findings

The Registrar must comply with the mandatory requirement of issuing Form O-3 before removing a trade mark from the Register. A registered proprietor cannot be made to suffer the consequence of removal where the reminder notice was not issued.

Decision

The Court held that removal of the trade mark without issuance of the mandatory Form O-3 notice was unjustified and directed restoration of the trade mark ODEON to the Register. The Petitioner was permitted to file the renewal application along with the prescribed fees and requisite formalities.

Keywords

Form O-3 Mandatory Notice Registered Proprietor Removal of Trademark Renewal of Registration Restoration of Trademark Section 25(3)