The case of Rakesh Kumar Mittal v. The Registrar of Trade Marks before the High Court of Delhi is a significant ruling in the domain of trademark law, particularly in relation to the mandatory procedural safeguards required before the removal of a registered trademark from the Register. It raises a critical question about the extent to which administrative agencies must comply with statutory mandates when exercising quasi-judicial powers. The case underlines the mandatory nature of notice issuance prior to cancellation of registration, ensuring procedural fairness and protecting the vested rights of proprietors under the Trade Marks Act, 1999.

Factual Background: The petitioner, Rakesh Kumar Mittal, is engaged in the business of manufacturing and trading in electronic goods, specifically amplifiers, microphones, loudspeakers, transformers, and related components. On May 6, 1994, he filed an application bearing number 627446 for registration of the trademark “MILTON” under Class 9 of the Trade Marks Act, 1999, claiming usage since September 24, 1982. The registration certificate was eventually issued on May 30, 2003, but the registration was valid only up to May 6, 2004. Due to non-filing of the renewal application within the prescribed time, the trademark was removed from the Register, as published in Trade Marks Journal No. 1442 dated October 16, 2010.

The petitioner contended that he never received the statutory Form O-3 notice under Section 25(3) of the Trade Marks Act, which is a precondition for lawful removal of a trademark. He learned about the removal only through an RTI response and thereafter initiated the present writ proceedings seeking restoration of the trademark registration and permission to file belated renewal applications.

Procedural Background:  After discovering the removal, the petitioner filed a Right to Information (RTI) application to determine whether the Registrar of Trade Marks had issued the mandatory Form O-3 notice. The response from the trademark office acknowledged that no such notice had been issued, asserting that if a trademark is registered after ten years from the date of application, Section 25(3) is inapplicable. The petitioner, through his counsel, approached the Delhi High Court by way of a writ petition under Article 226 of the Constitution of India seeking restoration and renewal of the trademark. The matter was heard and reserved on April 29, 2025, and the judgment was pronounced on May 27, 2025, by Hon’ble Mr. Justice Saurabh Banerjee.

Legal Issue: The primary legal issue in the case was whether the removal of a registered trademark from the Register of Trade Marks without issuing a mandatory notice under Section 25(3) of the Trade Marks Act, 1999, read with Rule 64(1) of the Trade Marks Rules, 2002, is valid and sustainable in law?

Discussion on Judgments: A pivotal precedent cited in this case was the judgment of the Division Bench of the Delhi High Court in Union of India v. Malhotra Book Depot, 2013 SCC OnLine Del 828, where it was held that the issuance of notice under Section 25(3) is a condition precedent before the removal of a trademark. The Court held that procedural steps outlined in the statute must be followed strictly and cannot be bypassed, even if the registration has lapsed by time.

In support of this legal stance, the petitioner also referred to the decision of the Bombay High Court in Cipla Ltd. v. Registrar of Trade Marks and Another, 2013 SCC OnLine Bom 1270, where it was reiterated that the statutory notice must be issued even if the renewal application has not been filed, and failure to do so renders the removal invalid.

Further, the Bombay High Court in Kleenage Products (India) Pvt. Ltd. v. Registrar of Trade Marks and Others, 2018 SCC OnLine Bom 46, emphasized that registered proprietors must be informed of impending expiry and given a fair chance to renew their trademarks. The petitioner also relied on Promoshirt SM (P) Ltd. v. Registrar of Trade Marks, 2024 SCC OnLine Del 7722; Malhotra Book Depot v. Union of India, 2011 SCC OnLine Del 5086; Gopal Ji Gupta v. Union of India, 2019 SCC OnLine Del 7670; and Ashok Bhutani v. The Registrar of Trade Marks & Anr., W.P.(C)-IPD 22/2024, all affirming that mere lapse of time does not justify cancellation unless the mandatory notice is duly served.

The decisions uniformly underscored that the removal of a trademark without issuing the prescribed notice under Section 25(3) and Rule 64(1) is a violation of statutory requirements and administrative fairness.

Reasoning and Analysis of the Judge:  The court conducted a thorough analysis of the statutory framework and the procedural mandate under the Trade Marks Act and Rules. He noted that Rule 64(1) of the Trade Marks Rules, 2002 clearly obliges the Registrar to send a written notice (Form O-3) to the registered proprietor at least one month and not more than three months before the expiry of the trademark. The Court observed that such procedural compliance is not merely directory but mandatory in nature, particularly where vested rights of individuals are at stake.

The Court further rejected the respondent’s argument that the issuance of the registration certificate after ten years from the date of application negated the applicability of Section 25(3). It held that the date of actual registration triggers the start of the renewal period and that administrative interpretations contrary to statutory provisions cannot stand in the face of judicial precedents and express legislative command.

The Court also invoked the principle laid down by the Supreme Court in E. Palanisamy v. Palanisamy, (2003) 1 SCC 123, reiterated in Sarla Goel v. Kishan Chand, (2009) 7 SCC 658, that procedural steps under a statute must be followed sequentially and cannot be bypassed. The decision reinforced that if the legislature has imposed a procedural safeguard, courts must give effect to it and not dilute it based on administrative convenience.

Final Decision:  The Delhi High Court allowed the writ petition. It directed the Registrar of Trade Marks to restore and reinstate the registration of the petitioner’s trademark “MILTON” bearing Application No. 627446 under Class 9. The Court further directed that upon the petitioner filing appropriate renewal applications and completing the prescribed formalities, the Registrar must grant renewal of the trademark for the periods 2004–2014, 2014–2024, and 2024–2034 and issue the corresponding certificates.

Law Settled in This Case:  The judgment reaffirmed the settled position that the issuance of a Form O-3 notice under Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of the Trade Marks Rules, 2002 is a mandatory precondition for the removal of a registered trademark from the Register. Any removal of a trademark in the absence of such notice is illegal, unsustainable, and without jurisdiction. The case underscores that administrative authorities cannot disregard statutory procedures and that procedural fairness is integral to the exercise of statutory powers under the Trade Marks Act.

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks: May 27, 2025:W.P.(C)-IPD 40/2024:2025:DHC:4432:High Court of Delhi :Hon'ble Mr. Justice Saurabh Banerjee

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi