The division bench of Bombay High Court in a recent judgement held that removal of a registered mark from the register without complying with the mandatory requirements of section 25(3) of the Trade Marks Act, 1999, read with its rules would be illegal.
In the Kleenage Products (India) v Registrar of Trademarks case, Kleenage was the owner of various trademarks including Swan Brand and Klitolin under which various products were sold. An application was tendered by Kleenage seeking registration of the trademark Klitolin, which was was duly registered. The trademark was renewed from time to time from 21 August 1988 to 21 August 2009. The trademark was due for renewal in 2009. However, inadvertently, Kleenage did not apply for renewal within six months from expiry of registration and its application was later disallowed by the registrar. Kleenage filed a writ petition before Bombay High Court seeking issuance of a writ of prohibition to prevent the Registrar of Trademarks from removing Kleenage’s trademark from the records. Kleenage contended that issuing a notice to the trademark proprietor under section 25(3) of the Trade Marks Act was mandatory in the absence of which the registrar should allow renewal of the trademark.
The high court while allowing the writ petition held that the removal of the registered mark from the register entails civil consequences for the registered proprietor of the mark and the registered trademark cannot be legally removed without prior notice to the registered proprietor/joint proprietors in the prescribed form. The mere expiration of the registration, and the failure of the registered proprietor of the trademark to get the mark renewed, by itself, does not lead to the conclusion that the mark can be removed from the register by the Registrar of Trademarks without complying with the mandatory procedure prescribed in section 25(3) of the Trade Marks Act and its rules. The Registrar of Trademarks was therefore directed to consider Kleenage’s application for renewal of the trademark on payment of the required fees.
The dispute digest is compiled by Bhasin & Co, Advocates, a corporate law firm based in New Delhi. The authors can be contacted at firstname.lastname@example.org or email@example.com. Readers should not act on the basis of this information without seeking professional legal advice.