Rakesh Kumar Mittal v. The Registrar of Trade Marks

1. By way of the present writ petition, the petitioner seeks issuance of a writ of mandamus or any other appropriate writ, order or direction directing the Registrar of Trade Marks[1] to restore and reinstate the registration of the petitioner’s trademark MILTON/ in Class 9 of the Trade Marks Act, 1999[2]; for quashing of any internal decision, action or omission that resulted in the removal of the said trademark from the Register of Trade Marks[3]; and directions to the respondent to permit him to file renewal applications for the periods 2004-2014, 2014-2024, Hereinafter referred as “respondent” Hereinafter referred as “TM Act” Hereinafter referred as “Register” and 2024-2034; and upon such filing, to issue the corresponding renewal certificates. Brief Facts and Contention:

2. The petitioner is engaged in the business of Amplifiers Microphones, Horns for Loud Speakers, Loud Speakers and Transformers and Horn Units and Parts. The petitioner filed application no.627446 on 06.05.1994 for registration of the trademark MILTON/ in Class 9 of the TM Act, claiming usage since 24.09.1982. Subsequently, the Registration Certificate was issued on 30.05.2003 and the trademark was due for renewal on 06.05.2004.

3. However, due to non-renewal within the prescribed time, the registration of the aforesaid trademark lapsed and was consequently removed from the Register, as notified in Trade Marks Journal No.1442 dated 16.10.2010.

4. The petitioner then filed an RTI application to ascertain whether the respondent had served him with a Form O-3 Notice in terms of Section 25(3) of the TM Act. The relevant part of the response thereto is as under:- “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.”

5. As per petitioner, admittedly, though the Registration Certificate was issued on 30.05.2003 and the trademark was due for renewal on 06.05.2004, the respondent had to send the mandatory Form O-3 Notice specifying the date of expiration of the registration and the conditions for its renewal in compliance of Section 25(3) of the TM Act. However, Form O-3 Notice was never served on the petitioner.

6. In view of the aforesaid non-compliance by the respondent of the mandatory procedure prescribed under Section 25(3)4 of the TM Act, the renewal application was not filed by the petitioner within the prescribed time. Therefore, since the removal was without any fault of the petitioner, as such the same was illegal and unsustainable.

7. Based on the aforesaid facts and circumstances, learned counsel for the petitioner has primarily submitted that there is a sheer non-compliance of the mandatory provisions of the TM Act as also the Trade Marks Rules, and thus the registration of the trademark in issue ought to be restored.

8. Learned CGSC, supporting the order of the respondent of removal of the trademark of the petitioner from the Register submitted that there is no fault in the order and the trademark of the petitioner has rightly been removed from the Register of the trademarks. Analysis and Reasoning:

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, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the 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 of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2). Hereinafter referred as “TM Rules”

9. This Court has heard learned counsel for the parties as also perused the pleadings along with the relevant documents filed in support thereof.

10. The prescribed time and manner for issuance of Form O-3 Notice are set out in Rule 64(1) of the TM Rules, wherein it is mandated that where no renewal application along with the prescribed fee has been received, the Registrar shall issue a written Form O-3 Notice to the registered proprietor(s) of the trademark, at least one month and not more than three months before the date of expiration of the registration.

11. In fact, 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, as held in a consistent line of judicial precedents of this Court as well as by various other Hon’ble High Courts. In this regard, the Hon’ble Division Bench of this Court in Union of India v. Malhotra Book Depot[6], while dealing/ interpreting Section 25 of the earlier Trade and Merchandise Marks Act, 1958, which is akin to Section 25 of the TM Act, held as under:

2013 SCC OnLine Del 828 step to be a precondition for the next step and it being impermissible to straightaway jump to the last step. It was further held that the last step can come only after the earlier step has been taken. The Trade Marks Act is an Act for the benefit of the proprietors of trademarks (refer Thukral Mechanical Works v. P.M. Diesels Pvt. Ltd.(2009) 2 SCC 768). When the Act itself has prescribed the procedure for removal, we do not find any justification for holding the said procedure to be not mandatory or not binding on the Registrar or to uphold the removal even if such procedure is not followed. We are here concerned with the legislative interpretation and cannot be guided by the consequences as argued by the counsel for the appellants, which may follow as a result of the said interpretation. Where the statute is clear, the Court has to give effect to the right created and should not restrict that right merely in order to minimize litigation. It has been held in Coal India Ltd. v. Saroj Kumar Mishra (2007) 9 SCC 625 that legislative interpretation cannot be rejected merely for the reason of opening the floodgates of applications or litigations. XXX

16. Section 25(3) providing for sending of a notice prescribes removal of the trademark only if at the expiration of the time prescribed in the notice, the conditions required therein to be fulfilled have not been complied. The Supreme Court recently in Head Master, Lawrence School Lovedale v. Jayanthi Raghu AIR 2012 SC 1571 held that the use of the word if is meant to indicate a condition. Thus, Section 25(3) cannot be interpreted as permitting removal without the condition of sending of notice being complied with: Earlier also, a Full Bench of the Punjab & Haryana High Court in Harbans Singh v. State of Punjab AIR 1987 P & H 19 held that the word if is always expressive of a condition... …” [Emphasis supplied]