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COMMUNICATION OF RG-3 NOTICE MANDATORY BEFORE REMOVAL OF TRADE MARK

The Trade Marks Act, 1999 read with the Trademark Rules, 2017 places an obligation on the Registrar of Trade Marks to send a notice to the registered proprietor of a Trade Mark before its expiration in Form RG-3 (earlier known as O-3), communicating the date of expiration and the conditions regarding renewal of registration. RG-3 notice is an important part of the trademark renewal process, as it ensures the proprietor of trademark is aware of the impending expiration of trademark and can take steps to renew the same.

Section 25 (3) of the Trade Marks Act, 1999 provides that:

‘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 condition 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 from the register’

Further, as per Rule 58 (1) of the Trademark Rules, 2017:

‘In case no application for renewal of the registration in the prescribed form together with the specified fee has been received, the Registrar shall send, not more than six months before the expiration of registration of the trademark, a notice in Form RG-3 at the address of service informing the registered proprietor of the approaching date of expiration and the conditions, if any, subject to which the renewal of the registration may be obtained.’

Whilst the wording of the aforementioned provisions would suggest it is mandatory for the Registrar to send the RG-3 and/or O-3 notice, the same hasn’t always been complied with. In this regard, it would be pertinent to refer a few important judgments passed by Bombay High Court and Delhi High Courts, wherein, it was held that there is indeed an obligation upon the Registrar of Trade Marks to issue an RG-3 and/or O-3 notice to the Proprietor of Trade Mark before its expiration and the said Trade Mark cannot be removed from the Register in the absence of the same.

Union Of India & Ors. v. Malhotra Book Depot

The first such instance where the issue came up was in Malhotra Book Depot v. Union of India , before the Delhi High Court. Whilst elucidating on the Registrar’s duty to issue an O-3 notice, the Court held that it was mandatory for the Registrar to issue said notice to the proprietor before expiration of Trade Mark. If pursuant to the said notice, the Proprietor failed to renew his trademark, only in such a case, the said Trade Mark can be removed from the Register. The Court further held that Section 25 (3) of the Trade Marks Act requires the Registrar to send the notice to the “Registered Proprietor” himself, and notice to the general public cannot be deemed to be notice to the Registered Proprietor. The said decision was upheld by the Division Bench of Hon’ble Delhi High Court.

Cipla Limited v. The Registrar of Trademarks & Anr

In the present case, a Division Bench of the Bombay High Court affirmed the view taken by the Delhi High Court in Malhotra Book Depot case, and held that sending of an O-3 notice before removal of a Trade Mark by the Registrar of Trade Mark is a mandatory requirement. Whilst interpreting Section 25 (3) of the Trade Marks Act, the Court opined that the use of the word ‘shall’ establishes that the Registrar is mandatorily required to send the said notice.

In view of the above cases, it is now a well-settled principle of Trademark Law in India that sending of RG-3 and/or O-3 notice to the registered proprietor of trademark is a mandatory obligation cast upon the Registrar of Trade Marks. The removal of Trade Mark from the Register without the notice being served upon the Registered Proprietor would be in contravention of Section 25 (3) of the Trade Marks Act, 1999 read with Rule 58 (1) of the Trademark Rules, 2017 and therefore bad in law. This principle has now been followed by various High Courts in India while dealing with such cases.

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