The Registry removed a mark for non-renewal, defended itself with a public notice issued to the world at large, and admitted it had no proof of serving the statutory notice on the proprietor. The Delhi High Court restored the mark — and told the Registry to look again at every case in the same position.
The case
Petitioner: Vijay Kumar Salwai (M/s Modern Namkeen Bandar) Respondent: Union of India Mark: Modern Namkeen Bandar (device) Court: High Court of Delhi, Justice J.R. Midha
The petitioner’s mark was removed from the Register without notice having been sent to him under Section 25(3) of the Trade Marks Act, 1999. He sought to have the removal set aside and the mark restored.
The Registry’s answer was twofold: it had issued a public notice dated 24 September 2010 inviting petitions about marks removed in the preceding two months, and having received no representation from the petitioner, the mark was removed. It further submitted that it had issued notice under Section 25(3) — but that it did not have proof of serving it.
The issue
Whether a public notice issued by the Registrar is sufficient compliance with Section 25(3).
The order
By order dated 28 May 2019, Justice Midha reiterated the mandatory nature of Section 25(3). The Registrar is obliged to send notice of the approaching expiry of a mark’s validity to its proprietor before that expiry. The absence of such notice is a ground for restoration of a mark removed for want of timely renewal.
The court set aside the removal and directed the Registry to issue notice afresh, giving the petitioner an opportunity to file for renewal.
Crucially, it went further, directing the Registry to consider the renewal application in every case where a registered mark had been removed without a record of the mandatory Section 25(3) notice — relief extending well beyond the petitioner before it.
Why Section 25(3) is mandatory
When a registered mark nears the end of its registration period, the Registry must send the proprietor notice of the approaching expiry date and the conditions for renewal. This is prescribed by Section 25(3) of the Act and Rule 58 of the Trade Marks Rules, 2017 — which states that the Registrar “shall send … a notice … at the address of service”.
The mandatory character of the provision is undisputed and has been echoed by several High Courts — the Bombay High Court in Cipla Limited v. Registrar of Trade Marks (W.P. No. 1669 of 2012) and Kleenage Products (India) v. The Registrar of Trade Marks, and the Delhi High Court in Union of India v. Malhotra Book Depot.
The proof-of-service question
Justice Midha did not decide the question of proof of service, but the Registry’s submission makes it worth examining.
Section 25(3) requires the Registrar to send notice “in the prescribed manner” — and “prescribed” is defined in Section 2(s) as prescribed by the Rules, namely the Trade Marks Rules, 2017.
Rule 18(1) prescribes the mode of service: communications and documents may be served by leaving them at, or sending them by post to, the address of service, or by email. Rule 18(3) addresses proof: it is sufficient for the Registrar to prove that the letter was properly addressed and put into the post, or that the email was sent to the email id provided by the party.
So the bar is not high — but it is a bar. The Registry must be able to show something.
That argument had already failed once. In Kleenage Products, on materially identical facts, 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 supporting the submission that notice had been sent, it cannot be concluded that notice was sent or received.
The pattern
The position is abundantly clear: notice of approaching expiry must be sent to the registered proprietor before removal; service must be individual to each proprietor, not by way of public notice; and there must be a record of that service.
Despite the absence of any ambiguity in the Act or the Rules, proprietors are repeatedly forced to approach the High Courts to restore marks removed without notice. The “yet again” in the title was not rhetorical — this is a recurring failure, and the courts have been consistent every time.
The practical implication for owners is unfortunately simple: do not rely on receiving the O-3 renewal reminder. Diarise renewal dates independently, because the remedy for a missing notice is a writ petition — a good remedy, but not one anyone wants to need.
The takeaways
- Section 25(3) notice is mandatory — and must precede removal for non-renewal.
- A public notice is not compliance — service must be individual to the proprietor.
- Absence of notice is a ground for restoration — as the court held here.
- Diarise renewals yourself — the reminder is a legal entitlement, not a reliable system.
Frequently asked questions
Can a trademark be removed for non-renewal without notice? No — Section 25(3) requires the Registrar to send notice of approaching expiry to the proprietor before removal, and absence of notice is a ground for restoration.
Is a public notice sufficient compliance with Section 25(3)? No — the Delhi High Court held that service must be individual to the proprietor, not by way of a public notice to the world at large.
What counts as proof of service by the Registry? Under Rule 18(3), it is sufficient to prove that the letter was properly addressed and posted, or that the email was sent to the address provided by the party.
What should I do if my mark was removed without notice? Seek restoration — courts have consistently set aside removals where no record of the mandatory Section 25(3) notice exists.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India