Isabella Mariam

The High Court of Delhi Single Bench of Justice Saurabh Banerjee has directed the restoration and reinstatement of a trademark registration that had been removed from the Register of Trade Marks without prior notice. In its final order, the Court unequivocally stated that the removal of a registered trademark without compliance with the mandatory statutory procedure under Section 25(3) of the Trade Marks Act, 1999 is legally unsustainable. The judgment mandates the Registrar of Trade Marks to not only reinstate the registration but also to process the renewal applications for three consecutive decades, subject to the petitioner’s compliance with prescribed formalities.

The Court issued a writ of mandamus, directing the Registrar to act in accordance with the statute and rules, particularly concerning issuance of Form O-3 Notice—a condition precedent before any removal. The judicial directive reinforces the binding nature of procedural safeguards embedded within the legislative scheme for trademark regulation. With this judgement, the petitioner’s trademark stands restored, and the Registrar is obligated to issue renewal certificates upon receipt of requisite applications and fees. The case underscores the judiciary’s commitment to procedural adherence in intellectual property law administration.

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The petitioner, engaged in the business of manufacturing and dealing in amplifiers, microphones, horns for loudspeakers, loudspeakers, transformers, and related components, initially filed for trademark registration for the mark MILTON/ under Class 9 of the Trade Marks Act, 1999. The application, bearing number 627446, was submitted on 06.05.1994, asserting usage of the mark from 24.09.1982. Subsequently, a Registration Certificate was issued on 30.05.2003, marking the trademark’s validity for ten years starting from the date of application.

The trademark became due for renewal on 06.05.2004. However, as the renewal was not processed within the prescribed statutory timeframe, the trademark registration lapsed and was formally removed from the Register of Trade Marks as published in Trade Marks Journal No.1442 dated 16.10.2010.

The petitioner, upon becoming aware of the removal, filed a Right to Information (RTI) application to ascertain whether the statutory Form O-3 Notice, as mandated under Section 25(3) of the Trade Marks Act, had been served by the Registrar. The response received from the respondent stated:

“As per record subject application was applied dated 06/05/1994 vide certificate no 263429 Dated: 30/05/2003 for 10 year from 06/05/1994 to 06/05/1994. If the application is registered after 10 years from the date of Application, the provision of sec 25(3) does not applicable. The Registered Proprietor will get six months from the date of issuance of Registration Certificate.”

Challenging this position, the petitioner contended that the respondent was duty-bound to issue the Form O-3 Notice specifying the expiration date and terms for renewal. The absence of such notice, it was argued, invalidated the removal process, which had been undertaken in contravention of the express legal mandate.

The petitioner invoked Section 25(3) of the Trade Marks Act, which requires that before the expiration of the registration period, the Registrar must issue a notice to the registered proprietor stating the date of expiration and setting out the conditions for renewal. The non-receipt of this mandatory notice prevented the petitioner from initiating timely renewal procedures.

Through the present writ petition, the petitioner sought a direction to the Registrar for restoration and reinstatement of the trademark MILTON/, nullification of any internal action that led to its removal, and an order allowing submission of renewal applications for the periods 2004-2014, 2014-2024, and 2024-2034.

The respondent, represented by the learned Central Government Standing Counsel (CGSC), contested the petition, arguing that the trademark had rightfully been removed in view of the petitioner’s non-compliance with renewal requirements. According to the CGSC, no procedural lapse could be attributed to the Registrar, and the removal action was legally sound.

Justice Saurabh Banerjee examined the facts, submissions, and legal provisions in detail. The Court referred to Rule 64(1) of the Trade Marks Rules, 2002, which stipulates that where no renewal application is received, the Registrar must issue a Form O-3 Notice to the registered proprietor at least one month and not more than three months before the date of expiration.

The Court recorded “The issuance of notice under Section 25(3) of the TM Act read with Rule 64(1) of the TM Rules is a mandatory precondition before removal of a trademark from the Register.”

Relying on established precedents, including Union of India v. Malhotra Book Depot, the Court stated:

“Though the period of registration was prescribed as seven years, renewable from time to time on application in the prescribed manner within the prescribed time, the removal of the mark from the register has been made subject to sending of a notice in the prescribed manner calling upon the registered proprietor to renew the mark and permitted only upon the failure of the registered proprietor to do so.”

Further, quoting from the same judgment, it added: “Section 25(3) cannot be interpreted as permitting removal without the condition of sending of notice being complied with.”

Justice Banerjee noted that the Registrar’s failure to send the Form O-3 Notice was not merely a procedural irregularity but a foundational breach of statutory obligation.

Referring to Cipla Ltd. v. Registrar of Trade Marks, Kleenage Products (India) Pvt. Ltd. v. Registrar of Trade Marks, and decisions from co-ordinate benches of the Delhi High Court, including Promoshirt SM. (P) Ltd. and Gopal Ji Gupta v. Union of India, the Court stated:

“The mere expiration of a trademark registration by lapse of time and/or failure of registered proprietor(s) to get it renewed does not ispo facto justify its removal from the Register.”

In conclusion, the Court held that the removal of the trademark MILTON/ without serving Form O-3 Notice was “ex facie illegal.”

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In the concluding section of the judgment, the Court allowed the writ petition and issued specific directions to the Registrar of Trade Marks. “The respondent is directed to restore and reinstate the registration of the petitioner’s trademark MILTON/, bearing application no.627446 in Class 9 of the TM Act.”

Furthermore, the Court instructed:

“Upon the petitioner filing appropriate application(s) and fulfilling the prescribed formalities, grant renewal of the aforesaid trademark for the periods 2004-2014, 2014-2024, and 2024-2034, and accordingly issue the certificates of renewal.”

The judgment concluded that both parties shall bear their own costs. There was no award of damages or any other ancillary relief beyond restoration and renewal of the trademark registration.

Advocates Representing the Parties:

For the Petitioner: Mr. Siddharth Yadav, Mr. Ayush Dey and Mr. Nageshwar Kumhar, Advocates

For the Respondent: Ms. Nidhi Raman, Central Government Standing Counsel (CGSC)

Case Title: Rakesh Kumar Mittal v. The Registrar of Trade Marks

Neutral Citation: 2025: DHC:4432

Case Number: W.P.(C)-IPD 40/2024

Bench: Justice Saurabh Banerjee

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