Case Note & Summary
The petitioner, Cipla Limited, sought a writ of certiorari to quash the removal of its registered trade mark 'CIPLA' from the register and a mandamus to restore it. The mark had been registered since 1945 and periodically renewed until 2002, when renewal was inadvertently missed. In 2012, the petitioner learned that the mark had been removed; an RTI application revealed that no notice in Form O-3, as required under Section 25(3) of the Trade Marks Act, 1999 and Rule 64(1) of the Trade Marks Rules, 2002, had been issued for the year 2002. The petitioner argued that the mandatory notice had not been sent, rendering the removal illegal. The respondents contended that a public notice had been issued and that the office must have sent the O-3 notice, though the records for 2002 were not available. The court, after examining the statutory scheme and relying on judgments of the Delhi High Court in Malhotra Book Depot v. Union of India, held that compliance with Section 25(3) is mandatory, and removal without prior notice is void. A public notice does not satisfy the requirement of individual notice to the registered proprietor. The respondents' argument that the office must have sent the notice was not supported by any evidence, and the court declined to speculate in their favor. Accordingly, the removal order was quashed, and the Registrar was directed to restore and renew the trade mark. The rule was made absolute.
Headnote
A) Intellectual Property - Trade Marks - Renewal and Removal - Trade Marks Act, 1999, Section 25(3); Trade Marks Rules, 2002, Rule 64(1) - The Registrar must send notice to the registered proprietor before expiration of registration; removal without such notice is void. The petitioner's trade mark CIPLA was removed from the register due to non-renewal without the requisite Form O-3 notice. The court directed restoration and renewal, holding that the mandatory procedure was not followed. (Paras 3-12) B) Intellectual Property - Trade Marks - Statutory Interpretation - Trade Marks Act, 1999, Section 25(3) - A public notice does not satisfy the requirement of sending notice to the registered proprietor under Section 25(3) - Held that the Registrar must send individual notice to the registered proprietor; general public notice is not contemplated by the statute. (Paras 9-10) C) Intellectual Property - Trade Marks - Rules and Act Conflict - Trade Marks Rules, 2002, Rule 64(1) - Rules are subservient to the Act and cannot deviate from the parent Act - The court relied on the Delhi High Court judgments to affirm that removal without mandatory notice is illegal, and that Rule 68 cannot be read as permitting removal without compliance of Rule 67/64. (Paras 7-8)
Issue of Consideration
Whether the removal of the petitioner's trade mark from the register without issuance of notice under Section 25(3) of the Trade Marks Act, 1999 and Rule 64(1) of the Trade Marks Rules, 2002 is illegal and void.
Final Decision
Impugned order removing trade mark from register quashed. Registrar directed to restore and renew the registration. Rule made absolute.
Law Points
- notice mandatory before removal of trademark
- Section 25(3) Trade Marks Act 1999 is mandatory
- removal without notice is void
- public notice does not satisfy statutory requirement
- rules subservient to Act
- compliance with procedural safeguards required for civil consequences
