In a significant ruling, the Rajasthan High Court held that even if a trademark has not been renewed for more than seven years after its expiration, it cannot be removed from the official records without prior notice to the trademark holder. The decision was passed in the case titled Jitendra Goyal v Registrar of Trade Marks by Justice Anoop Kumar Dhand of the Jaipur Bench.
The matter revolved around the trademark “Lala Ji Diamond Agarbatti,” originally registered by the petitioner, Jitendra Goyal, trading as M/s Anshul Products, through an application dated 25th May 1999. The registration was valid until 25th May 2009.
According to the petitioner’s counsel, although no renewal application was filed after the trademark expired, the Registrar failed to issue the mandatory notice under Section 25(3) of the Trademarks Act, 1999 and Rule 58 of the Trademark Rules, 2017 before removing the trademark from the official records.
"It is a legal obligation under the Act and Rules that the Registrar must send a notice before removing a trademark from the register," the petitioner contended.
On the other hand, the respondent argued that the trademark had expired long back in 2009 and no steps were taken by the petitioner for renewal over the last seven years. Hence, the removal was justified.
However, the Court noted that the removal of the trademark without issuing the prescribed notice was in direct violation of the law.
"A bare perusal of Section 25(3) and Rule 58 makes it evident that before removing a trademark, a notice in Form RG-3 must be served to the registered proprietor. This procedural requirement is mandatory," the Court observed.
Justice Dhand emphasized that the Registrar's action of deleting the trademark without serving notice was not sustainable in the eyes of law. As a result, the Court set aside the action and allowed the writ petition.
"Since the respondents have failed to comply with the mandatory provision, their action of removal is quashed and set aside," the judgment stated.
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The Court clarified that the authorities are at liberty to pass a fresh order, but only after due compliance with the statutory provisions and by providing the petitioner an opportunity to be heard.
The bench further directed:
"If the petitioner files an application for renewal, the respondents must consider it in accordance with the law."
Accordingly, the petition was allowed.
Title: Jitendra Goyal v Registrar of Trade Marks