Case Note & Summary
The petitioners, Mr. Raju Patel (trading as M/s. Anand Ply) and Matra Mobili Private Limited, filed a writ petition before the Bombay High Court seeking directions to the Registrar of Trade Marks to renew/restore the trade mark 'SUNDAY' (Application No.1823390) and to record the assignment of the trade mark from Petitioner No.1 to Petitioner No.2. The trade mark was originally registered in favour of Petitioner No.1 on 5th May 2011, valid until 29th May 2019. On 1st March 2019, the Registrar dispatched a renewal notice (Form RG-3) under Section 25(3) of the Trade Marks Act, 1999 to the trade mark agent of Petitioner No.1, M/s. Vishesh & Associates. However, Petitioner No.1 claimed that the notice was never served upon it. On 11th November 2024, Petitioner No.1 filed an interlocutory application before the Registrar seeking permission to renew the registration, contending non-service of the renewal notice. On 29th November 2024, Petitioner No.1 assigned the trade mark to Petitioner No.2. The Registrar did not act on the application, leading to the present petition. The court framed the issue of whether the Registrar could refuse renewal solely on the ground of delay when the renewal notice was not served. The petitioners argued that the delay was due to non-service of the notice and that the Registrar had the power to condone the delay under Section 25(4) read with Rule 63 of the Trade Marks Rules, 2017. The respondent argued that the notice was dispatched to the agent and that the petitioners were negligent. The court held that the Registrar must consider the renewal/restoration application on merits and cannot reject it solely on the ground of delay, especially when the delay is attributable to non-service of the statutory notice. The court also held that the Registrar must consider the application for recording the assignment along with the renewal application. The court directed the Registrar to consider the petitioners' applications for renewal/restoration and recording of assignment within a period of eight weeks, after giving the petitioners an opportunity of hearing. The petition was disposed of accordingly.
Headnote
A) Trade Marks Act, 1999 - Renewal of Trade Mark - Section 25 - Restoration - The court considered whether the Registrar could refuse renewal of a trade mark on the ground of delay when the renewal notice (Form RG-3) was not served on the proprietor. The court held that the Registrar must consider the application for renewal and restoration on merits, and cannot reject it solely on the ground of delay, especially when the delay is due to non-service of the statutory notice. (Paras 1-10) B) Trade Marks Act, 1999 - Assignment of Trade Mark - Section 37 - Recording of Assignment - The court held that the Registrar must consider the application for recording the assignment of the trade mark along with the renewal/restoration application, as the assignee steps into the shoes of the assignor and is entitled to seek renewal. (Paras 11-15) C) Trade Marks Act, 1999 - Renewal Notice - Section 25(3) - Sufficiency of Notice - The court examined whether the dispatch of Form RG-3 notice to the trade mark agent constitutes sufficient service. The court held that the Registrar must ensure actual service or at least reasonable steps to serve the proprietor, and mere dispatch to an agent may not be sufficient if the agent fails to inform the proprietor. (Paras 16-20) D) Trade Marks Act, 1999 - Delay in Renewal - Condonation - The court held that the Registrar has the power to condone the delay in filing the renewal application under Section 25(4) read with Rule 63 of the Trade Marks Rules, 2017, and must exercise this power liberally to avoid removal of the trade mark from the register. (Paras 21-25)
Issue of Consideration
Whether the Registrar of Trade Marks can refuse to renew or restore a trade mark solely on the ground of delay in filing the renewal application, when the delay is attributable to non-service of the renewal notice (Form RG-3) and the trade mark has been assigned to another party.
Final Decision
The Bombay High Court disposed of the writ petition with directions to the Registrar of Trade Marks to consider the petitioners' applications for renewal/restoration of the trade mark 'SUNDAY' and for recording the assignment of the trade mark, within a period of eight weeks from the date of the order, after giving the petitioners an opportunity of hearing. The court held that the Registrar cannot refuse renewal solely on the ground of delay when the renewal notice was not served, and must consider the applications on merits.
Law Points
- Renewal of trade mark
- restoration of trade mark
- condonation of delay
- assignment of trade mark
- Section 25 Trade Marks Act 1999
- Section 37 Trade Marks Act 1999
- Rule 63 Trade Marks Rules 2017
- Form RG-3 notice
- sufficiency of notice
- natural justice
