Delhi High Court orders restoration and renewal of mark despite 26-year lapse

In Union of India v Malhotra Book Depot, the two-judge bench has upheld a decision of the single judge in which the latter had found that a mark cannot be removed from the register if the mandatory notice in Form O-3 has not been issued by the Trademarks Registry. The court took this step even though:

• the petitioner was taking advantage of the fact that the 26-year-old records of dispatch of notice would not be available; and
• the single judge's order, if sustained, would "open the floodgates for applications for renewal/registration of trademarks which have lapsed a long time ago".

The bench held that a notice in Form O-3 was mandatory in order to remove a mark from the register and, on that basis, the court ordered the restoration of the trademark MBD after a lapse of 26 years.

The facts of the case were as follows:

1. Malhotra Book Depot (MBD) claimed that, in April 2010, it had applied for a certified extract of its registration for the trademark MBD within the context of a trademark infringement action. It was then informed that the mark was not present in the records of the Trademark Registry. Further investigations revealed that the mark had not been renewed after the second term, which ended on November 23 1984.
2. MBD applied for the renewal and restoration of the mark. However, the renewal/restoration application was rejected by the registry on the grounds that it was time barred.
3. MBD filed a writ of mandamus before the Delhi High Court, arguing that the mandatory Form O-3 notice had not been issued and that such notice was necessary for the mark to be removed.

The registrar of trademarks disagreed, arguing that the renewal of the mark had become due on November 23 1984 - that is, 26 years prior to the filing of the writ petition - and that the writ petition thus suffered from delay. The removal of the trademark was notified in the Trademark Journal in December 1990 for non-payment of the renewal fees, and such removal could not be carried out without following the due process of law. The applicant was thus taking advantage of the fact that the 26-year-old records of dispatch of notice in Form O-3 would not be available.

The single judge allowed the petition on the following grounds:

• Section 25 of the Trade and Merchandise Marks Act 1958, read in conjunction with Rule 67 of the Trademarks Rule 1959 (which were applicable in 1984 when the mark lapsed), clearly provides that an application for renewal of a registration can be made only upon receipt of the notice in Form O-3 and that the registrar can remove the trademark from the register and advertise the removal in the Trademark Journal only after a notice in Form O-3 has been issued.
• The mere expiration of the registration through lapse of time or failure of the registered proprietor to renew the mark does now, by itself, mean that the registrar can remove the mark from the register without complying with the mandatory procedure. Since the mandatory Form O-3 notice had not been served, the application seeking the restoration and renewal of the registration could not be said to be time-barred.
• The registrar had merely stated that the mark could not have been removed without following the due process under the provisions of law. Therefore, the registrar had made only a presumptive statement.

The registrar appealed to the division bench. However, the bench upheld the order of the single judge, holding that the mandatory Form O-3 notice had not been issued in the present case. The bench also disagreed with the findings of the Intellectual Property Appellate Board (IPAB) in an earlier case concerning the renewal of a mark in similar circumstances, in which it was held that the Trademark Act does not make the renewal of a trademark dependent upon the service of notice in Form O-3 and does not make the removal of the mark dependent on the issuance of such notice. The court held that the IPAB's finding that the registrar was not bound to show the proof of dispatch/service of such notices was fallacious.

The provisions on the renewal and restoration of trademarks in the old and new versions of the Trademark Act are identical. Thus, the court’s finding will apply to registrations that have been granted under the new act. The fact that the trademark registry's records are not in good order has come up many times over the past few years, including in the context of recent projects initiated by the registry to clear the opposition backlog and record registration changes.

The decision thus reinforces the need for the registry to have robust systems in place to avoid procedural lapses. This may be good news for trademark owners who have failed to renew their registrations, as they might claim that no Form O-3 notice has been issued. In addition, the decision will help to resolve the renewal and restoration cases pending before the trademark registry that turn on the issue of whether a Form O-3 notice is mandatory.

Madhur Chopra, Ranjan Narula Associates, New Delhi