In a significant judgment, the Delhi High Court has restored the trademark registration of the Swiss luxury brand 'Davidoff', setting aside an earlier order passed by the Intellectual Property Appellate Board (IPAB) which had removed the mark over alleged delay in renewal.
The case was heard by Justice Amit Bansal, who ruled in favour of the petitioner, M/s Zine Davidoff SA, the registered proprietor of the mark 'DAVIDOFF'. The High Court found that the removal of the mark by the IPAB was improper due to a procedural lapse on part of the Trademark Registry.
Read Also:-Delhi High Court Upholds Dismissal of CAPF Constable Over Unauthorised Absence After Surgery
The controversy began when IPAB, through its order dated 9th March 2012, allowed a rectification petition and removed Davidoff’s trademark (No. 454875) from the register. The basis of IPAB's decision was that the mark was renewed long after the deadline, making it ineligible for continued protection.
However, the counsel for the petitioner argued that the trademark application was filed on 30th May, 1986, and was valid until 30th May, 1993. But the actual registration certificate was issued only on 31st December, 1997. After receiving the certificate, the petitioner applied for renewal on 29th June, 1998 for the period 1993 to 2000, well within the permitted statutory extension of six months.
Read Also:-Delhi High Court Directs Legal Help for Three Indians Facing Death Sentence in Indonesia
A second renewal was filed on 16th April, 2001, for the period 2000 to 2007, ensuring continuity. It was argued that the petitioner had never allowed the mark to lapse.
The main legal issue revolved around Form O3 notice, which is a mandatory requirement under Section 25 of the Trade Marks Act, 1958 and Rule 64 of the Trade Marks Rules, 1959. This form serves as a formal reminder from the Trademark Registry to the registered proprietor before a trademark’s expiration.
“It is settled position of law that issuance of O-3 notice is a mandatory requirement which must be complied by the Trademark Registry,” the Court held.
Read Also:-Delhi High Court Grants Interim Relief to JEE (Main) 2025 Aspirant Over Discrepancy Allegations
Following court orders, the Trade Marks Registry was asked to verify whether a Form O3 notice had been issued. An affidavit filed by the Registry in September 2024 admitted that no such record was available, meaning no O3 notice was issued.
The Court referred to past judgments, including Union of India v. Malhotra Book Depot and Epsilon Publishing House Pvt. Ltd. v. Union of India, where courts had consistently held that a proprietor must not be penalized for lapses committed by the Trademark Registry.
“Surely, respondent No. 3 cannot be penalised... would be entitled to pursue its application for renewal of its trademark,” the Court had ruled in a similar case earlier.
Justice Bansal emphasized that the legal landscape on this issue had evolved since IPAB’s 2012 order. Hence, the petitioner was entitled to benefit from the current legal position.
In conclusion, the Court ordered:
“The petitioner’s mark ‘DAVIDOFF’ bearing trademark registration no. 454875 is restored to its original number in the Register.”
It further directed the Registry to correct the renewal status and notify the Controller General of Patents, Designs & Trade Marks for compliance.
This decision reaffirms that statutory procedures, especially mandatory notices, must be strictly followed, and brand owners should not suffer due to administrative failures.
Appearance: Mr. Ranjan Narula, Mr. Shakti Priyan Nair and Mr. Parth Bajaj, Advocates for Petitioner; Mr. L.B. Rai, Mr. Ayush Pandita and Mr. Satvik Rai, Advocates for R-2.
Case title: M/S Zine Davidoff SA v. Union Of India And Anr
Case no.: W.P.(C)-IPD 57/2021
