Mandatory notice before trade mark removal: unlawful non-renewal cannot trigger the restoration limitation period.

Removal of a registered trade mark for non-renewal required prior notice in the prescribed form under the governing statutory scheme; absent that mandatory notice, the removal was invalid and could not stand. Because the mark had been removed without compliance with the prescribed procedure, the one-year restoration limitation did not apply against the applicant. The trade mark was therefore directed to be restored and renewed, subject to payment of charges and compliance with formalities, without prejudice to any third-party claim.

---

---

Issues: (i) Whether the removal of the registered trade mark from the register was valid without issuance of the mandatory notice in Form O-3 under the governing statutory scheme. (ii) Whether the application for restoration and renewal was barred by limitation under the restoration provision after such removal.

Issue (i): Whether the removal of the registered trade mark from the register was valid without issuance of the mandatory notice in Form O-3 under the governing statutory scheme.

Analysis: The statutory scheme under Section 25 of the Trade and Merchandise Marks Act, 1958 and Rules 66 to 68 of the Trade and Merchandise Marks Rules, 1959 required the Registrar to give prior notice of approaching expiration in the prescribed form before removing a mark for non-renewal. The removal of a registered mark has civil consequences and cannot be effected without compliance with the prescribed notice procedure. A mere lapse of registration by efflux of time does not itself authorize removal from the register without following the mandatory steps.

Conclusion: The removal of the trade mark from the register without issuance of the mandatory notice was illegal.

Issue (ii): Whether the application for restoration and renewal was barred by limitation under the restoration provision after such removal.

Analysis: Section 25(4) and Rule 69 operate on the premise of a lawful removal after compliance with the notice procedure. Where the mark was removed ab initio without following Section 25(3) and Rules 67 and 68, the one-year limitation for restoration could not be invoked against the applicant. Restoration of a trade mark is a remedial matter and should not be approached punitively, particularly where no third-party rights have intervened.

Conclusion: The restoration application was not barred by limitation.

Final Conclusion: The writ petition succeeded and the respondents were directed to restore and renew the trade mark registration, subject to payment of charges and compliance with formalities, without prejudice to any third-party claim.

Ratio Decidendi: Before a trade mark can be removed for non-renewal, the Registrar must comply with the prescribed prior notice procedure; a removal made without such compliance is invalid and cannot trigger the restoration limitation period.

---