AI OCR 
TaxTMI 
TaxTMI 
TaxTMI 
2013 (11) TMI 593
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....PLA and a writ of mandamus directing him to restore to the register the petitioner's said trade mark. 3 The mark was registered with effect from 6.11.1945 as evidenced by a certificate of registration dated 10.02.1949. The registration was renewed from time to time and was last renewed for a period of 7 years on 6.11.1995 till 6.11.2002. Thereafter due to inadvertence the registration was not renewed. 4 Sometime in the first quarter of 2012, the petitioner came to know that its mark had been removed from the register due to non-renewal. The petitioner however, had not received any notice as per Section 25(3) of the Trade Marks Act, 1999 (hereinafter referred to as the Act) from respondent no.1 notifying it of the date of expiration and th....
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....e is in this section referred to as the expiration of the last 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 mon....
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....d user, if any, in writing in Form O-3 of the approaching expiration at the address of their respective principal places of business in India as entered in the register or where such registered proprietor or registered user has no principal place of business in India at his address for service in India entered in the register." Mr.Desai submitted that it was mandatory for the respondent no.1 to have issued the notice in form O-3 prior to removing the petitioner's trade mark from the register. The first respondent's failure to do so renders the removal of the mark from the register illegal. He further submitted that the removal of a trade mark from the register entails civil consequences for the registered proprietor thereof. In the scheme ....
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....etor or if there are more than one, to each of the registered proprietors, in writing in form O-3, of the approaching expiration of the registered trade mark. Upon receipt of said notice, the application for renewal of the registration may be made, in which case, the same would be renewed. If, however, after the expiration of the last registration of a trade mark, the renewal fee has not been paid despite issuance of a notice by the Registrar in form O-3, the Registrar may remove the trade mark from the register and advertise the fact forthwith in the journal. 16. The scheme of the Act and the Rules, therefore, is that before the removal of the mark from the register, the Registrar must give prior notice in form O-3 to the registered propr....
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....de any time within six months before the expiration of the last registration. However the removal for non-renewal has not been made automatic. If the registered proprietor does not make an application for renewal till two months prior to the expiration of the last registration, the Registrar is required to notify the registered proprietor of the approaching expiration (under Rule 67) and is to remove the trademark from the register only thereafter, as is evident from Rule 68 having been placed after Rule 67. If removal pursuant to nonrenewal was to be de hors the notice for removal, Rule 68 would have followed Rule 66 and not Rule 67. Though Rule 68 permits removal upon expiration of last registration and non-payment of renewal fee and does....
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.... respondents submitted that public notice had been issued by the Controller-General of Patents, designs and trade marks, who is the Registrar of Trade marks calling upon the parties who had not paid the renewal fee and who had not received the Form O-3 notice to pay and have the trade mark renewed and that only the trade marks of those who had not complied with the said requisition had been removed from the register. 10 The public notice does not constitute compliance with the provisions of Section 25(3). Section 25(3) requires the Registrar to send the notice "to the registered proprietor". A general public is not contemplated under the section. 11 Mr.Joshi further contended that in the present case, the office must have issued O-3 notic....