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Restoration of a trademark: Special Analysis of Section 25(3)

Restoration of a trademark is an action or process of bringing back the mark to the register of trademarks, which has been removed from it. There are several instances when a mark is removed from the register. These reasons go under a rigorous scrutiny before being removed and getting a second chance for the proprietor is difficult in majority of the situations.

However it so happens that certain situations require a second hearing and for those cases the Trademarks Act lays down provisions that aid and enables a proprietor to restore is mark. Thus restoration of trademark can work in few instances like absence of timely renewal of the original or previous registration of the same.

A trademark when registered grants the proprietor up to 10 years of protection and upon renewal of the same another 10 years are added to the protection. Taking into consideration the human tendency, it so happens that the proprietor delays to renew his mark and reiterated by the registry, this situation happens multiple times.

In order to overcome delay in renewal, the Trademarks Act of 1999 has a provision of section 25(3): “At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:
Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2)”

This means that the Registrar has to send forward a notice to the proprietor of the mark under section 25(3). This provision is stipulated so as the proprietor is reminded of his renewal deadline. Irrespective of the notice being served the proprietor fails at sending an application of renewal, the mark is removed off the register.

The Trademarks Act of 1999 provides another provision for the proprietor of the mark to safeguard his mark. Under section 25(4) if the proprietor sends in an application of restoration of his mark within one year from the expiration of the last registration of the trademark along with the prescribed fee then the mark shall be processed to be restored. The Registrar whilst considering the request for restoration of the expired trademark shall look into the interest of other affected persons.

Upon the restoration of the expired trademark, a notice has to be sent by the Registrar to the proprietor for the restoration and the same must be advertised in the official Journal. The advertisement is done in order to invite any objection in relation to the action made. If an objection arises then the Registrar shall take up the matter into hearing and if not the trademark is restored for another 10 years in the name of the proprietor.

It is important to know that sending a notice under 25(3) is highly important. Now if the O3 notice under section 25(3) is not served by the registrar, the proprietor has a right to appeal the High Court as a writ petition.

This writ petition acts as a challenge upon the due procedure of law. The prescribed procedure has not been followed if the notice is not served hence the cancellation of the mark stands at a halt. This appeal upon hearing puts the onus on the proprietor of the mark to establish and produce evidence of not receiving the notice. If the parameters of establishing checks out, then the registrar has to rebut the contentions. However the initial onus lies on the applicant/proprietor. The whole process stands void if the O3 notice has not been issued.

Similarly, in the case of Union of India v Malhotra Book Depot[1], the respondent’s did not receive any Notice in Form O-3 and despite of non issuance the Registry had removed the mark from the Register. The court had stated that a mark cannot be removed without following the due process as per the provisions of law and had been done without following the due process and had made presumptive statements and also in the Respondent's case the Form O-3 had not been issued as provided for in Rule 67. Such removal without due procedure will itself be laconic and illegal.

It was also held by the Supreme Court in the case of Sarla Goel v. Kishan Chand[2], which again emphasized the importance of following the statutory procedure step by step and held an earlier step to be a precondition for the next step and it being impermissible to straightway jump to the last step. It was further held that the last step can come only after step has been taken.

When the act itself has prescribed the procedure for removal, it is not justified in holding the said procedure to be not mandatory or not binding on the Registrar to uphold the removal even if such procedure is not followed. Thus it is important to know that abundance of leniency is given to the proprietor, even when the trademark is expired and he can apply for restoration when notice under form O3 has not been delivered to him by the Registrar.

In order to eliminate bogus appeals on not receiving O3 notice, trademark rules have stipulated that in filing of TM1 Form it is mandatory to give your email id. This is done so as to make the process of serving O3 notice convenient on both the ends. If email id is not provided it shall be a defaults on the part of the proprietor of the mark.

There are two cases of application that has to be made for restoration of a trademark. The first case being the registration which is to be done within six months from the date of expiration of the last registration wherein a surcharge fee is also payable. And the second being for restoration of the registration of a trademark, which has been removed from the register of trademarks, after six months to one year counted from the date of expiration of its last registration, herein both restoration and renewal fees are applicable in this case.

Restoration of an expired trademark safeguards the proprietor from duplicity and enables to maintain the exclusive nature of the mark. If the expired trademark is not restored then the brand opens up in the market and can be exploited by anyone. Thus, in order to protect the rights of the proprietor that are attached with the trademark, it is necessary to restore the trademark and the Act provides us with certain provision for us to enable the action of restoration.

End-Notes:
  1. MIPR 2013 (1) 246
  2. (2009) 7 SCC 658

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