Petitioner: Vijay Kumar Salwai (M/s Modern Namkeen Bandar)

Respondents: Union of India

Trademark: Modern Namkeen Bandar (device)

Court: High Court of Delhi

Coram: Justice JR Midha


The Petitioner’s mark was removed from the Register, without notice having been sent to him under Section 25(3) of the Trademarks Act, 1999. The Petitioner sought this removal to be set aside, and his mark to be restored.  The Registry submitted that it had issued a public notice dated 24th September, 2010 inviting petitions regarding marks that had been removed in the preceding two months. Having received no representation from the Petitioner, the mark was removed.

The Registry further submitted that it had issued notice under Section 25(3), but it did not have proof of serving such notice.


1.       Whether public notice issued by the Registrar is sufficient compliance of Section 25(3)?


Justice Midha, in his order dated May 28, 2019, reiterated the mandatory nature of Section 25(3) of the Trademarks Act, 1999. As we have noted before, the Registrar is obligated to send a notice regarding the expiry of validity of a mark to its proprietor, before the said  expiry. Absence of such a notice is a ground for restoration of a mark removed for want of renewal within the prescribed time. The Court therefore set aside the removal of the Petitioner’s trademark, and directed the Registry to issue notice afresh, so as to provide the Petitioner an opportunity to file for renewal.

The Court also directed the Registry to consider the application for renewal for all cases in which the registered mark had been removed without record of mandatory notice under Section 25(3) of the Act.

Significance of Section 25(3):

When a registered trademark is nearing the end of its registration period, the Registry is to send a notice to the registered proprietor regarding the approaching date of expiry, as well as the conditions for renewal, as we have explored here. This is prescribed by Section 25(3) of the Act, as well as Rule 58 of the Rules.

The mandatory nature of Section 25(3) is undisputed, and has been echoed in the judgements of various High Courts, including that of the Bombay High Court in both Cipla Limited v. Registrar of Trade Marks (W.P No. 1669 of 2012), Kleenage Products (India) v. The Registrar of Trade Marks as well as by the Delhi High Court in Union of India v. Malhotra Book Depot. Rule 58 of the Trademark Rules, 2017 also lays down the mandatory nature of the notice, stating that the Registrar “shall send … a notice … at the address of service”.

While Justice Midha did not consider the question of proof of service, it is worth exploring how the Act and the Rules contemplate service of notices, as well as proof of service, in light of the submission by the Registry in this case.

Section 25(3) of the Act states that the Registrar shall send notice “in the prescribed manner to a registered proprietor”, wherein ‘prescribed’ is defined in Section 2(s) as meaning prescribed by the Rules made under the Act, namely the Trademark Rules, 2017. The 2017 Rules prescribes the mode of service for the Registrar in Rule 18(1), stating that all communication and documents may be served by leaving them at, or sending them by post to the address of service, or by email communication. Sub-rule 3 addresses proof of service, by stating that it shall be sufficient for the Registrar to prove that the letter was properly addressed and put into the post, or that the email communication was sent to the email id provided by the party, in order to constitute proof of service.

A similar argument to what the Registry argued in the instant case was put forth in an identical practical circumstance by the Registry in the case of Kleenage Products referred to above. The Bombay High Court, citing its division bench decision in Court Receiver, High Court, Mumbai v. Registrar of Trademarks (W.P. No. 1259 of 2015), held that in the absence of reliable evidence in support of the submission that notice has been sent, it cannot be concluded that such notice was sent, and that the petitioner was in receipt of the same.

It is abundantly clear that a notice regarding renewal of a mark approaching expiry is to be sent to a registered proprietor, prior to removing the mark. It is also evident that service of such notice is to be done individually to each proprietor, and not by way of public notice, and further that there must be record of such service. Despite the lack of any ambiguity in the Act or the Rules, it is unfortunate that proprietors are forced to constantly knock on the doors of various High Courts for their marks that have been removed sans notice, to be restored.  

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