The Bombay High Court recently decided a case where it put a check on the operation of the Trade Mark Registry outside the provision of law. The case was instituted by CIPLA Ltd. (the “Petitioner”) against the Registrar of Trade Marks (the “Respondent”). In this case, the Petitioner filed a writ of certiorari to set aside the order of the Respondent to remove the Petitioner’s trade mark ‘CIPLA’ from the Register of Trade Marks and a writ of mandamus directing the Respondent to restore the Petitioner’s trade mark.
The mark ‘CIPLA’ was registered with effect from 1945 and the registration had been renewed from time to time. The trade mark was last renewed in 1995 for a period of 7 years till 2002. Thereafter, due to inadvertence, the registration was not renewed. Sometime in the first quarter of 2012, the Petitioner came to know that its mark had been removed from the Register due to non-renewal. However, the Petitioner had not received any notice in ‘Form-O-3’ from the Respondent notifying it to renew its registration as is prescribed under the Trade Marks Act and Rules.
It was contended by the Petitioner that it was mandatory for the Respondent to issue the notice in ‘Form-O3’ prior to removing the Petitioner’s trademark from the Register of Trade Marks and the Respondent's failure to do so renders the removal of the mark from the Register illegal. The Respondent submitted that a public notice had been issued by the Respondent calling upon parties who had not paid the renewal fees and who had not received the Form O-3, to pay the renewal fees and have their trade mark renewed. The Respondent stated that the trade marks of only those who did not comply with the public notice were removed. The Hon’ble Court held that such a public notice does not constitute compliance with the requirements of the Trade Marks Act and the Rules which require the Registrar to send the notice to the ‘Registered Proprietor’. The removal of the trade mark from the Register for non-renewal has not been made automatic and the Registrar is bound to send the Notice in Form-O3 to the Registered Proprietor prior to such removal. Accordingly, the Respondent was directed to restore and renew the trade mark within 2 weeks of the Petitioner paying the requisite charges and complying with the formalities.