In a significant ruling of Motwane Private Ltd. v/s The Registrar of Trade Marks & Another, the Bombay High Court has underscored the legal rights of a trademark proprietor to seek the renewal of a trademark registration, even after a substantial delay, where the Registrar of Trademarks has failed to issue a renewal notice as mandated by the Trade Marks Act, 1999. This decision reiterates that the absence of such notice cannot deprive a registered proprietor of their right to renew their trademark registration.
The Case Background:
The case involved a petition filed by the petitioner, the owner of the trademark "MOTWANE," who sought to renew the registration of three trademarks under the registration numbers 312470, 312472, and 312473. These trademarks were originally registered and renewed by the petitioner until 17th February 1983. However, after this date, the petitioner failed to renew the marks, and they remained on the Register of Trademarks.
In August 2023, the petitioner discovered during a routine check of the trademark status that the marks had not been renewed since 1983. The petitioner claimed that no notice had been received from the Registrar under Section 25(3) of the Trade Marks Act, which mandates the Registrar to notify the registered proprietor of the expiration date of the registration and the conditions for renewal. Consequently, the petitioner sought clarity from the Registrar through a Right to Information (RTI) application, which confirmed that no such notice had been issued.
Legal Issue and Court's Ruling:
The petitioner approached the Bombay High Court, seeking a writ of mandamus to direct the Registrar to restore and renew the trademark registrations. The key legal issue was whether the petitioner’s failure to renew the trademarks, combined with the Registrar's failure to issue the mandated notice under Section 25(3), meant the petitioner could not seek renewal.
The Court considered the provisions of Section 25 of the Trade Marks Act, particularly sub-section (3), which requires the Registrar to notify the proprietor about the expiration of their trademark registration. The Court noted that if such a notice was not issued and the trademark continued to appear on the register, it could be implied that the right to renewal had not been extinguished. Therefore, the petitioner's right to renew the trademarks remained valid despite the lapse.
The Court referred to previous cases, including Cipla Ltd. v. Registrar of Trade Marks and Harbans Singh Khanduja v. Registrar of Trade Marks, which supported the notion that the non-issuance of the notice under Section 25(3) did not negate the right of the proprietor to seek renewal. The Court also highlighted that the legal framework allows for renewal applications to be filed even if there is a delay, provided that the necessary fees and procedural requirements are met.
Key Legal Precedents:
Several judicial precedents were cited, reinforcing the right of the proprietor to renew their trademark registration despite delays. In Cipla Ltd. v. Registrar of Trade Marks, the Court held that the failure of the Registrar to send a notice under Section 25(3) did not prevent the trademark owner from renewing their registration. Similarly, in Harbans Singh Khanduja’s case, where trademark owners had not renewed their trademarks for decades, the Court ruled in favor of allowing the renewal process to proceed, as the Registrar failed to comply with the statutory notice requirements.
The Court’s Direction:
The Court ruled in favor of the petitioner, quashing the Registrar’s rejection of the renewal applications. The Court emphasized that the petitioner was entitled to submit renewal applications with the prescribed fees, and the Registrar was required to process these applications in accordance with the law. Additionally, the Court allowed the petitioner a window of two weeks to file the necessary applications, with the Registrar obliged to consider and grant renewal within a further two weeks.
Conclusion:
This case highlights the importance of following due process under the Trade Marks Act, particularly the issuance of notices under Section 25(3). It confirms that the absence of such notices does not automatically extinguish the rights of the registered proprietor to seek the renewal of their trademark registration. The decision is a reminder that both trademark owners and the Registrar have responsibilities, and a failure on one side should not unjustly disadvantage the other. The ruling ensures that trademark owners can assert their rights even in cases of procedural lapses, provided they meet the necessary legal requirements.
Section 25, TRADE MARKS ACT - 1999
TRADE MARKS ACT, 1999
