The 3R’S of Registered Trademarks – Timelines and Judicial – Eshwars
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[Authors Mr. Saisunder and Ms. Srividya Sundaresan]


The provisions of Section 25 of the Trademarks Act, 1999 (“Act”), r/w Rules 58-61 of the Trademark Rules, 2017 (“Rules”) cast certain obligations on the registered proprietor and the Registrar of Trademarks vis-à-vis three R’s (renewal, restoration and removal) of registered trademarks.

The basic principles associated with the renewal and restoration of trademarks have remained consistent despite amendment (over a period of time) to the rules. In this article we look into the timelines associated with renewal and restoration of trademarks, and a recent decision setting out the law with regard to removal of trademarks.

Scenarios and timelines associated with renewal:

The following scenarios are contemplated under the law with respect to renewals:

Sl.No Scenario Timeline for filing renewal application Applicable format Rule reference
1. Application by Registered Proprietor Not more than one year prior to expiration of the last registration Form TM-R Section 25 (1) and (2) r/w Rule 57
2. Reminder by Registrar Registry is required to send notice at the address of service, not more than six months before the expiration of registration RG-3 or O-3 under the erstwhile Rules Section 25 (3) r/w Rule 58
3. Mark registered only 6 months prior renewal date Within six months after the actual date of registration Form TM-R Rule 58 (2)
4. Date of registration is after the due date of renewal Within six months after the actual date of registration Form TM-R Rule 58 (3)
5. Renewal after expiration of registration Proprietor can make an application within 6 months from the date of expiry of registration to registrar for renewal, and pay a surcharge along with the normal fee payable. Form TM-R proviso to Section 25 (3) r/w the proviso to Rule 59

Note: Along with application, the fee for renewal is also to be paid.

Restoration of trademarks after expiry of timelines for renewal:

Where the renewal of a trademark has not been carried out as contemplated under the Scenario in sl. Nos. [1] and [3 to 5] of the table above, then a proprietor is entitled to have his registered trademark restored by making an application for restoration. This application is to be made within a period of one year from the expiration of the registration. [Section 25 (4) r/w Rule 60]

Removal of a Mark by The Registry:

A mark can be removed by the Registrar, only after the satisfaction of all the procedural conditions and any removal to the contrary will be bad in law and void.

The Hon’ble High Court of Delhi in Gopal Ji Gupta Vs Union of India and Ors.[i],  looked into the aspect of removal of a trademark without issuing RG-3 (erstwhile O-3) notice intimating due date for renewal.

The application for registration of the Petitioner’s mark was filed on 15th June 1987 and was due for renewal during 1994. (The period of validity of trademark was increased from 7 years to 10 years under the present statute). The mark was published in the trademark journal on 16th December 1995 and registered only during 1998 (which was post the actual renewal due date).

The Petitioner first filed the renewal request in 2001. His efforts to ascertain status of his mark went futile, as the date of expiry of the mark was not informed to the Petitioner.

Sometime during 2015, the Petitioner noticed from the status page of the trademark website, that the mark was due for renewal and filed the renewal request on June 08, 2015 but the same was dismissed and fee was refunded by the Registrar of Trademarks on the ground that the renewal request was time barred. The Petitioner sought the Court’s directions to set aside the order of dismissal of the renewal application and allow the renewal of his trademark.

The Court while deciding in favour of the Petitioner decided the following issue:

Whether a renewal request can be denied by the Registrar of Trademarks without issuing the notice stipulated under Section 25 of the Act?

The Court held that a trademark can be removed only if the Registrar has complied with the requirements of issuing notice under Section 25(3) of the Act.

It also held that when a trademark, which is universally identified as intellectual “property”, is to be removed from the register such removal has the effect of divesting the registered proprietor of his property rights in the mark and hence a proprietor can be divested of his property rights in the registered mark only in the manner prescribed under the Act and the Rules. The principles enshrined in the Constitution of India applicable to tangible property would also apply to intangible intellectual property and such principles bar a person from being deprived of his property save in the manner prescribed by law.

The Court relied on the principles from an earlier decision in Union of India and Ors. vs. Malhotra Book Depot[ii] MANU/DE/0562/2013 wherein it was held as under:

  • that the Registrar could remove the Trademark from the Register and advertise the factum of removal in the Journal only after a Notice in Form O-3 had been issued;
  • that the removal of the registered Trademark from the Register entails civil consequences for the registered proprietor of the mark;
  • mere expiration of the registration by lapse of time and the failure of the registered proprietor of the Trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the register without complying with the mandatory procedure of issuing notice in form O-3;
  • that the plea of the Registrar that the application for restoration and renewal of the mark was beyond the time prescribed in Section 25(4) and Rule 69 could not be accepted because the removal of the mark from the Register was not in terms of Section 25(3) r/w Rules 67 & 68 [Rules 58, 59, 60 and 61 of Trademark Rules, 2017 are pari materia Rules 64, 65, 66 and 67 of the Trademark Rules 2002];
  • mere lapse of the time does not result in its removal and Notice in Form O-3 (RG-3 under the new Rules) is required to be given;
  • since the Notice in Form O-3 had not been given prior to the removal of the mark, the application seeking its restoration and renewal could not be said to be barred by time.


Conclusion:

The above decision casts an obligation on the Registrar of Trademarks to issue notice of renewal to the proprietor as required under Section 25 of the Act. Also, it is equally important for the registered proprietor to record and maintain accurate information concerning its address for service with the Registrar, as it will enable receipt of official correspondence from the Registry in a timely manner and not run the risk of being removed.

[i] MANU/DE/0998/2019

[ii] MANU/DE/0562/2013

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