Recently, the High Court of Delhi allowed a writ petition filed by Mr. Rakesh Kumar Mittal (“Petitioner”), thereby directing the Registrar of Trade Marks (“Respondent”) to restore and reinstate the Petitioner’s trademark MILTON. The Court further directed the Respondent to grant renewal of the said trademark, subject to the Petitioner’s filing of the requisite application and compliance with the prescribed formalities.
The Petitioner’s mark MILTON was entered into the Register of Trade Marks on May 30, 2003 and was due for renewal on May 6, 2004. However, due to non-renewal within the prescribed time, the registration lapsed and was consequently removed from the Register, as notified in the Trade Marks Journal dated October 16, 2010. Subsequently, the Petitioner filed an RTI application to ascertain whether the Respondent has served him with a Form O-3 Notice in terms of Section 25(3) of the Trade Marks Act, 1999 (“Act”). It was the Petitioner’s case that since Form O-3 Notice was not served on him, the removal of the trademark from the Register was not in accordance with the mandatory procedure of law. The Respondent, on the other hand, argued that the removal of the Petitioner’s mark was in accordance with the provisions of the Act.
The Court observed that issuance of written Form O-3 Notice to the registered proprietor of a trademark in case where no renewal application has been filed is a mandate under the Act. Relying on several judicial precedents, the Court stated that it is a settled legal position that mere expiration of a trademark registration either by lapse of time and/or failure of the registered proprietor to get it renewed does not ispo facto justify its removal from the Register. The removal of the trademark without complying with the mandatory procedural requirement is ex facie illegal. Accordingly, the Court allowed the writ petition.
Rakesh Kumar Mittal v. The Registrar of Trade Marks [W.P.(C)-IPD 40/2024 & CM 141/2024, judgement dated April 29, 2025]