Delhi High Court Orders Restoration of Trademark Due to Failure to Issue Mandatory Form O-3 Notice — “Removal Without Compliance with Section 25(3) TM Act Procedure is Illegal”

Court’s Decision

The Delhi High Court allowed the writ petition and directed the Registrar of Trade Marks to:

• Restore and reinstate the petitioner’s trademark MILTON/ bearing application no. 627446 in Class 9 of the Trade Marks Act, 1999;
• Permit the petitioner, upon filing appropriate applications and fulfilling formalities, to renew the trademark for three consecutive terms: 2004–2014, 2014–2024, and 2024–2034, and issue the relevant renewal certificates.

The Court held that the failure to issue a mandatory Form O-3 Notice as required under Section 25(3) of the TM Act and Rule 64(1) of the Trade Marks Rules rendered the removal of the trademark from the Register ex facie illegal.

Facts

• The petitioner had been using the trademark MILTON/ in respect of amplifiers, microphones, loudspeakers, and related goods since 1982.
• A formal registration application was filed on 06.05.1994, and registration was eventually granted via Certificate No. 263429 dated 30.05.2003 for a period of ten years.
• The registration was due for renewal on 06.05.2004, but no renewal application was filed, leading to its removal from the Register, as notified in the Trade Marks Journal dated 16.10.2010.
• Through an RTI response, it was revealed that the respondent had not issued Form O-3 Notice, a statutory requirement before removal.

Issues

1. Whether the respondent’s omission to issue Form O-3 Notice under Section 25(3) TM Act and Rule 64(1) TM Rules invalidates the removal of the petitioner’s trademark?
2. Whether the petitioner is entitled to restoration and renewal of the removed trademark?

Petitioner’s Arguments

• The respondent failed to issue the mandatory Form O-3 Notice, which is a precondition under Section 25(3) of the TM Act for initiating removal proceedings.
• Due to this non-compliance, the petitioner was deprived of the opportunity to renew the trademark, and thus the removal was illegal and unsustainable.
• Reliance was placed on multiple judicial precedents confirming the mandatory nature of this statutory notice.

Respondent’s Arguments

• The removal of the trademark was justified on the ground that the renewal application was not filed within the stipulated time.
• It was contended that there was no procedural fault on the part of the Registrar.

Analysis of the Law

• Section 25(3) of the Trade Marks Act, 1999 provides that the Registrar must issue a notice prior to the expiration of the registration, informing the proprietor about renewal conditions.
• Rule 64(1) of the Trade Marks Rules, 2002 mandates that such notice (Form O-3) must be sent at least one month and not more than three months before expiration.
• The RTI response admitted that the Form O-3 Notice was not sent, and the respondent erroneously believed that Section 25(3) was not applicable due to late registration.
• The Court clarified that issuance of Form O-3 is mandatory, irrespective of the time of registration.

Precedent Analysis

The Court relied extensively on previous decisions, including:

• Union of India v. Malhotra Book Depot, 2013 SCC OnLine Del 828 — Held that removal cannot occur without issuance of notice under Section 25(3).
• Cipla Ltd. v. Registrar of Trade Marks, 2013 SCC OnLine Bom 1270 — Reinforced that mere lapse of time is insufficient; mandatory notice is a prerequisite.
• Kleenage Products (India) Pvt. Ltd. v. Registrar of Trade Marks, 2018 SCC OnLine Bom 46 — Recognised failure to issue notice as a ground for restoration.
• Promoshirt SM. (P) Ltd. v. Registrar of Trade Marks, 2024 SCC OnLine Del 7722 — Emphasized that the Registrar must strictly comply with statutory notice provisions.
• Ashok Bhutani v. Registrar of Trade Marks, W.P.(C)-IPD 22/2024 — Followed the same reasoning in favour of restoration.

The Court also cited E. Palanisamy v. Palanisamy, (2003) 1 SCC 123, and Sarla Goel v. Kishan Chand, (2009) 7 SCC 658, to underline that each procedural step must be followed in sequence, and skipping steps is impermissible.

Court’s Reasoning

• The non-issuance of Form O-3 was not disputed by the respondent.
• The statutory scheme under the TM Act and Rules clearly mandates that removal can occur only after due notice.
• Relying on precedents, the Court ruled that “Section 25(3) cannot be interpreted as permitting removal without the condition of sending of notice being complied with.”
• Therefore, the respondent’s act of removing the petitioner’s trademark was procedurally illegal and violative of natural justice.

Conclusion

• The removal of the petitioner’s trademark MILTON/ from the Register was declared illegal.
• The Court ordered restoration of the trademark, and upon compliance with formalities, its renewal for the next three ten-year terms.
• Writ petition was allowed. No order as to costs.

Implications

• The judgment underscores the strict compliance requirement for procedural mandates under the Trade Marks Act.
• It provides relief to trademark proprietors who lose registration due to non-service of statutory notices.
• The ruling acts as a significant precedent in ensuring accountability and transparency in trademark registry administration.
• It reiterates that registrars cannot bypass mandatory steps, and procedural lapses will render their actions legally untenable.

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