Amrit Singh Mehta Trading as Mehta Cosmetics v. Controller General of Patents, Designs and Trade Marks

A registered trademark cannot ordinarily be removed from the Register without complying with the mandatory statutory notice requirement under Section 25(3) of the Trade Marks Act.

SHORT DESCRIPTION ABOUT THE CASE:

This case concerns restoration of the trademark BLUE CHIP after its removal from the Register. The Delhi High Court examined the statutory requirement of issuing the prescribed notice to the registered proprietor before removal of a trademark for non-renewal.

FACTS:

The petitioner had filed Trade Mark Application No. 577478 on 21 July 1992 for registration of BLUE CHIP in Class 3. The mark was subsequently registered on 3 August 2005.

The petitioner stated that the registration certificate was never received. Since the renewal application was not filed, the trademark was subsequently removed from the Register and its status was reflected as expired and removed.

The petitioner later approached the Court seeking restoration. The petitioner relied upon the fact that the Registrar had not issued the prescribed notice calling upon the registered proprietor to renew the trademark before removal.

The respondent was unable to establish that the mandatory notice had actually been sent to the petitioner.

FINDINGS:

The Court considered Section 25(3) of the Trade Marks Act, 1999 and observed that removal of a registered trademark for failure to renew is subject to compliance with the prescribed statutory notice requirement.

The Court relied upon the established principle that mere failure to file the renewal application within the prescribed period does not by itself permit removal without the mandatory notice contemplated by law.

Since the prescribed notice in Form-O2 under the earlier Rules had not been issued before removal, the Court found a statutory violation.

The Court therefore directed restoration and reinstatement of the trademark BLUE CHIP and permitted the petitioner to file the renewal application with the prescribed fee and complete the necessary formalities.

SUGGESTION:

Trademark proprietors should maintain accurate records of registration, renewal dates, registration certificates and communications received from the Trade Marks Registry.

Where a trademark is shown as expired or removed, the proprietor should verify whether the statutory notice required before removal was actually issued and served. Copies of Registry correspondence, postal records, emails and application history should be preserved.

JUDGMENT / PRINCIPLE:

The Court restored the BLUE CHIP registration because the mandatory notice requirement under Section 25(3) had not been complied with. The case demonstrates that procedural safeguards prescribed under the Trade Marks Act must be followed before removing a registered trademark from the Register.