Bombay HC Directs Trademark Registrar To Decide Applications For Renewal/Restoration Of Expired Marks For Which No Removal Notice Is Issued
The Bombay High Court recently directed the Trademark Registrar to decide within four weeks of filing applications for renewal or restoration of expired trademarks in cases wherein no notice under section 25(3) of the Trademarks Act was issued to remove them from the registry.A division bench of Justice GS Kulkarni, while directing the restoration of a trademark that had been removed...
The Bombay High Court recently directed the Trademark Registrar to decide within four weeks of filing applications for renewal or restoration of expired trademarks in cases wherein no notice under section 25(3) of the Trademarks Act was issued to remove them from the registry.
A division bench of Justice GS Kulkarni, while directing the restoration of a trademark that had been removed without notice, passed this general direction so parties don't have to unnecessarily approach the court for renewal/restoration in such cases.
“This would preclude such parties from resorting to unwarranted litigation against the Registrar of Trademarks by approaching this Court or resorting to any other legal proceedings. In our opinion, such applications if made are required to be accordingly decided by the Registrar of Trademarks as expeditiously as possible and within four weeks of such application/s being made following the principles of law as discussed in Motwane Private Ltd. (supra) by taking a decision at the departmental level”, the court observed.
Earlier this year, the same bench had held in Motwane Private Ltd. v. The Registrar of Trade Marks that notice under section 25(3) Trademarks Act is mandatory before removal of a trademark. In that case, the Registrar had not removed the expired trademark but still refused to renew it on grounds of delay in filing for renewal.
The petitioner in the present case, Indi Pharma Pvt. Ltd., registered its trademark 'VOMISET' in 1996 with a validity up to July 26, 2006. It didn't renew the trademark after its expiry. The trademark was removed from the trademark register; however, the trademark registry did not issue a removal notice under section 25(3) of the Trademarks Act, 1999 before the removal.
Thus, the petitioner filed the present writ petition seeking to restore the trademark and renew it for a further period of 20 years from July 26, 2006.
In light of the decision in the Motwane Private Ltd. case, advocate Ashish Mehta for the trademark registrar submitted that the petitioner's trademark shall be restored so that the petitioner can file an application for renewal of its registration.
Thus, the court directed the restoration of the petitioner's trademark within three weeks from the date of this order.
It stated that after the trademark is restored, the petitioner is permitted to make the necessary application for renewal of the registration. The court directed the Registrar to consider such an application within four weeks from the date of the application, keeping all contentions of the parties open.
The court observed that parties were repeatedly required to approach the court in similar cases where the trademarks have not been renewed and no notice for removal was issued by the Registrar.
Considering this, the court directed the trademark registrar to decide the applications for renewal/registration in similar cases as Motwane Private Ltd. and the present case, according to the law laid down in Motwane Private Ltd.
Advocates Hiren Kamod, Kaivalya Shetye and Mahesh Mahadgut represented the Petitioner.
Advocate Ashish Mehta represented the Trademark Registrar.
Case no. – Writ Petition (L) No. 32894 of 2023
Case Title – Indi Pharma Pvt. Ltd. v. Registrar of Trade Marks & Anr.