Case Note & Summary
The petitioner, Kleenage Products (India) Private Limited, a company incorporated under the Companies Act, 1956, engaged in manufacture and sale of washing and cleaning preparations, owned the trademark 'KLITOLIN' registered under No.379894. The trademark was originally registered and renewed from time to time from 21.08.1988 to 21.08.2009. When due for renewal on 21.08.2009, the petitioner inadvertently failed to apply for renewal. The petitioner contended that the Registrar of Trade Marks also failed to issue the mandatory notice in Form O-3 under Section 25(3) of the Trade Marks Act, 1999. Upon discovering that the trademark was likely to be removed, the petitioner filed a writ petition seeking a Writ of Prohibition to prevent removal, quashment of removal directions, and directions to restore and renew the trademark for a further period of 10 years from 21.08.2009. The court, after hearing both sides, found that the Registrar had not issued the mandatory O-3 notice, which is a prerequisite for removal. Consequently, the court allowed the petition, quashed the removal, and directed the Registrar to restore and renew the trademark for a period of 10 years from 21.08.2009.
Headnote
A) Trade Marks - Restoration and Renewal - Section 25(3) Trade Marks Act, 1999 - Mandatory Notice - The petitioner sought restoration and renewal of its trademark 'KLITOLIN' which was removed due to non-renewal. The court held that the Registrar's failure to issue the mandatory O-3 notice under Section 25(3) before removal vitiates the removal, and the petitioner is entitled to restoration and renewal. (Paras 3-5)
Issue of Consideration
Whether the Registrar of Trade Marks can remove a trademark from the register without issuing the mandatory notice under Section 25(3) of the Trade Marks Act, 1999, and whether the petitioner is entitled to restoration and renewal of the trademark.
Final Decision
The court allowed the petition, quashed the removal of the trademark 'KLITOLIN', and directed the Registrar of Trade Marks to restore and renew the trademark for a period of 10 years from 21.08.2009.
Law Points
- Mandatory notice under Section 25(3) of Trade Marks Act
- 1999
- Restoration of trademark
- Renewal of trademark
- Writ of Prohibition
Case Details
2018 LawText (BOM) (01) 46
Writ Petition No.850 of 2015
R. M. Borde, R. G. Ketkar
Mr. Hiren Kamod a/w. Ms Rinku Gajria and Ms Raina Gajria i/b. Gajria & Co. for Petitioner, Mr. Advait M. Sethna i/b. Mr. Parag Vyas for Respondents No.1 and 2
Kleenage Products (India) Private Limited
The Registrar of Trade Marks, Union of India
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Nature of Litigation
Writ petition seeking restoration and renewal of trademark and prohibition against removal.
Remedy Sought
Petitioner sought issuance of Writ of Prohibition to prevent removal of trademark 'KLITOLIN', quashment of removal directions, and directions to restore and renew the trademark for further period of 10 years from 21.08.2009.
Filing Reason
Petitioner's trademark 'KLITOLIN' was due for renewal on 21.08.2009 but petitioner inadvertently did not apply for renewal, and Registrar failed to issue mandatory O-3 notice under Section 25(3) of Trade Marks Act, 1999, leading to likely removal.
Issues
Whether the Registrar of Trade Marks can remove a trademark without issuing the mandatory notice under Section 25(3) of the Trade Marks Act, 1999.
Whether the petitioner is entitled to restoration and renewal of the trademark 'KLITOLIN'.
Submissions/Arguments
Petitioner argued that the Registrar failed to issue the mandatory O-3 notice under Section 25(3) of the Trade Marks Act, 1999, and therefore the removal is invalid and the trademark should be restored and renewed.
Respondents opposed the petition, but the court found that the Registrar had not issued the mandatory notice.
Ratio Decidendi
The issuance of notice under Section 25(3) of the Trade Marks Act, 1999 is mandatory before removal of a trademark for non-renewal. Failure to issue such notice renders the removal invalid, and the trademark must be restored and renewed.
Judgment Excerpts
The petitioner is praying for issuance of Writ of Prohibition or any other Writ or direction in the nature of prohibition prohibiting the respondent No.1 or his subordinate officers from removing the trademark 'KLITOLIN' under No.379894 from the records of the register of trademarks maintained by respondent No.1.
It is the contention of the petitioner that the respondent No.1 also failed to issue the requisite mandatory notice in Form O-3 to the registered proprietor under Section 25(3) of the Trade Marks Act, 1999.
Procedural History
The petitioner filed Writ Petition No.850 of 2015 before the High Court of Judicature at Bombay seeking relief against removal of its trademark. The court heard the parties and delivered judgment on 17 January 2018.
Acts & Sections
- Trade Marks Act, 1999: 25(3)
- Companies Act, 1956:
