Mr. Siddharth Yadav, Mr. Ayush Dey and Mr. Nageshwar Kumhar, Advocates v. THE REGISTRAR OF TRADE MARKS

Judgment

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 Marks1 to restore and reinstate the registration of the petitioner’s trademark MILTON/ in Class 9 of the Trade Marks Act, 19992; for quashing of any internal decision, action or omission that resulted in the removal of the said trademark from the Register of Trade Marks3; and directions to the respondent to permit him to file renewal applications for the periods 2004-2014, 2014-2024, 1Hereinafter referred as “respondent” 2Hereinafter referred as “TM Act” 3Hereinafter referred as “Register” Signature Not Verified W.P.(C)-IPD 40/2024 Digitally Signed By:BABLOO SHAH Signing Date:27.05.2025 18:53:31 and 2024-2034; and upon such filing, to issue the corresponding renewal certificates.

Brief Facts and Contention: 2. The petitioner is engaged 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/ 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 Signature Not Verified W.P.(C)-IPD 40/2024 Digitally Signed By:BABLOO SHAH Signing Date:27.05.2025 18:53:31

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, 20025 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:

425. 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 Registrar may remove the trade mark from the register: Provided that the Registrar 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). 5Hereinafter referred as “TM Rules” Signature Not Verified W.P.(C)-IPD 40/2024 Digitally Signed By:BABLOO SHAH Signing Date:27.05.2025 18:53:31

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 Depot6, 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: “13. Even otherwise, on a plain reading of Section 25, the inescapable conclusion is that though the period of registration was prescribed as seven years, renewable from time to time on application in the prescribed manner within the prescribed time [under Sub- Sections (1) & (2)] but the removal of the mark from the register has been made subject to sending of a notice in the prescribed manner calling upon the registered proprietor to renew the mark and permitted only upon the failure of the registered proprietor to do so [under Sub-Section (3)] and not merely on the failure of the registered proprietor to apply for renewal within the prescribed time.