Court Orders Registrar to Issue Mandatory Notice Before Trademark Removal as Per Trade Marks Act, 1999
In a significant ruling, the Kerala High Court has invalidated the removal of a trademark registered under the name of S. Prasannan, proprietor of "Vayalar Invention Centre," highlighting the procedural lapses by the Registrar of Trademarks. The Court emphasized the mandatory requirement under Section 25(3) of the Trade Marks Act, 1999, and Rule 58 of the Trade Marks Rules, 2017, which necessitates issuing a notice before the expiration of a trademark registration.
The petitioner, S. Prasannan, had approached the court after his application for the renewal of the trademark "VIC," used for manufacturing water level controllers, was rejected by the Controller General of Patents, Designs and Trademarks. The rejection was based on the grounds that the renewal request was submitted post the expiration date, without a prior notice being issued by the Registrar as required by law.
Justice Shoba Annamma Eapen, while delivering the judgment, noted that the Registrar's failure to notify the petitioner about the expiration of the trademark was a clear violation of the statutory provisions. The court directed the respondents to issue a fresh notice to the petitioner, allowing him to submit a new application for renewal. The court stressed the importance of adhering to procedural mandates to ensure fairness and legal compliance in administrative actions.
The ruling brings to light the crucial role of procedural diligence in intellectual property administration and sets a precedent for similar cases where procedural lapses could potentially invalidate administrative decisions.
Bottom line:-
Trade Marks Act, 1999 - Renewal of trademark registration - Mandatory notice under Section 25(3) and Rule 58 must be issued before removing a trademark from the register - Registrar's failure to issue such notice invalidates removal.
Statutory provision(s): Section 25(3) of the Trade Marks Act, 1999, Rule 58 of the Trade Marks Rules, 2017.
