Sanchayita Lahkar

The High Court of Rajasthan Single Bench of Justice Anoop Kumar Dhand held that the removal of a registered trademark without adhering to the mandatory procedural requirements under Section 25(3) of the Trademarks Act, 1999 and Rule 58 of the Trade Mark Rules, 2017 was unsustainable. The Court accordingly quashed the Registrar's action and directed that a fresh decision must be made in compliance with the said provisions and after providing an opportunity of hearing to the petitioner. The Court clarified that if an application for renewal is submitted, it must be processed strictly in accordance with law.

The petitioner, trading as M/s. Anshul Products and located at 377, Kavandheshpura, Ajmer-305001 (Rajasthan), was granted a registered trademark "Lala Ji Diamond Agarbatti" following an application made on 25.05.1999. The trademark registration remained valid until 25.05.2009. No application for renewal was submitted following the expiration of the registration period.

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The petitioner filed a writ petition before the Rajasthan High Court seeking a writ of mandamus or any other appropriate direction to compel the Registrar of Trade Marks, located in Ahmedabad, Gujarat, to grant registration and/or renewal of the petitioner’s Trade Mark Register No. 857965 dated 25.05.1999. Additionally, the petitioner requested the Court to award the costs of the petition and to issue any other relief deemed appropriate.

The primary ground for the petition was the alleged failure of the Registrar to comply with the mandatory provisions prescribed under Section 25(3) of the Trademarks Act, 1999 and Rule 58 of the Trade Mark Rules, 2017 before removing the registered trademark from the official records. It was submitted by the petitioner that, despite the absence of an application for renewal, the Registrar was legally obligated to notify the petitioner of the approaching expiry of the registration.

In support of this contention, counsel for the petitioner argued that the non-compliance with the above statutory obligations rendered the removal of the trademark invalid. The petitioner contended that the Registrar’s failure to issue the required notice before removing the registration was a violation of the mandatory procedure.

On the other hand, counsel representing the respondent Registrar opposed the petition. He submitted that the documents submitted by the petitioner were not valid for legal purposes and that the trademark had expired in May 2009. The respondent further argued that no application for renewal had been filed by the petitioner for over seven years following the expiry date. Consequently, the Registrar had justifiably removed the trademark from its records in accordance with the existing procedural framework.

The respondent contended that the Registrar’s action was in compliance with the law, given the absence of a renewal application for an extended period, and therefore the petitioner’s claim did not merit judicial intervention.

The Court examined the matter based on the materials on record and the submissions made by both parties. The following observations were recorded:

"Perusal of the record indicates that the petitioner submitted an application before the respondents for registration of his Trade Mark 'Lala Ji Diamond Agarbati' by way of filing an application on 25.05.1999 and the said application was allowed and the petitioner was granted the aforesaid Trade Mark and the same was valid till 25.05.2009."

The Court acknowledged that it was undisputed the petitioner had not filed an application for renewal post expiry. However, the Court critically examined whether the removal of the trademark complied with the statutory requirements.

"This fact is also not in dispute that before removing the trademark from the official record, the respondents have failed to comply with the mandatory provision contained under Section 25(3) of the Act of 1999."

The Court cited the relevant statutory provisions: "25. Duration, renewal, removal and restoration of registration. — (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..."

"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..."

The Court also referred to Rule 58 of the Trade Mark Rules, 2017:"In case no application for renewal of the registration in the prescribed form together with the specified fee has been received, the Registrar shall send, not more than six months before the expiration of registration of the trademark, a notice in Form RG-3 at the address of service..."

Based on the plain reading of the statute and the rules, the Court stated:"A bare perusal of the aforesaid provision provides that it was mandatory for the respondents to comply with the same before removing the Trade Mark from their register. The authorities were supposed to comply with the aforesaid provisions and issue a notice in the Form O-3/ RG-3 informing the registered proprietor of the date of expiry..."

The Court further stated: "In the instant case, the aforesaid exercise has not been undertaken by the respondents. Since the respondents have failed to comply with the aforesaid mandatory provision, their action of removal of registered trademark of the petitioner from the record is not sustainable in the eyes of law and such action is liable to be and is hereby quashed and set aside."

The Court allowed the writ petition and quashed the action taken by the Registrar in removing the petitioner’s trademark from the records. "The present writ petition is accordingly allowed."

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It further held: "The respondents would be at liberty to pass appropriate fresh order, after making due compliance of the provisions, contained under Section 25(3) of the Act of 1999 and Rules 58 of the Rules of 2017."

"Needless to observe that the respondents would pass fresh order, after making compliance of the aforesaid provisions, strictly in accordance with law and after providing due opportunity of hearing to the petitioner."

Finally, the Court stated: "In case, the petitioner submits an application for renewal of Trade Mark before the respondents, the respondents would decide the same strictly in accordance with law."

Advocates Representing the Parties:

For the Petitioners: Mr. G.D. Bansal with Mr. Dharmendra Kumar Gupta and Mr. K.K. Pancholi

For the Respondents: Mr. Mohit Balwada

Case Title: Jitendra Goyal, Trading As M/s. Anshul Products vs. Registrar of Trade Marks

Neutral Citation: 2025: RJ-JP:24054

Case Number: S.B. Civil Writ Petition No. 11453/2023

Bench: Justice Anoop Kumar Dhand