Rectification of a Registered Trademark due to Non-Renewal
Introduction:
The case at hand revolves around the rectification of a registered trademark based on the non-renewal of the said trademark within the specified time frame.
The petitioner asserted that the subject trademark's registration was initially granted until 21st February 2022, with the one-year renewal deadline expiring on 20th February 2023.
However, no application for the renewal of the mark's registration had been filed, and online records confirmed this fact. Consequently, the registration of the impugned mark had lapsed, but a one-year restoration period was available under Section 25(4) of the Trade Marks Act, 1999.
Ultimately, the Hon'ble High Court of Delhi directed the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This article delves into the legal aspects of trademark rectification due to non-renewal.
I. Background:
Trademark registration is crucial for protecting intellectual property and ensuring that the owner has exclusive rights to use the mark in connection with specific goods or services. However, this protection comes with the responsibility of timely renewing the trademark to maintain its validity.
II. Non-Renewal and Lapse of Trademark Registration:
The crux of this case lies in the failure to renew the trademark registration within the stipulated timeframe. Under trademark law, registrations are typically granted for a specific period, after which they must be renewed to remain in force. In this instance, the petitioner's mark was registered until 21st February 2022. Failure to renew by 20th February 2023 led to the automatic lapse of the registration.
III. Restoration of Lapsed Trademarks:
Section 25(4) of the Trade Marks Act, 1999, plays a pivotal role in this matter. It provides a lifeline for trademark owners whose registrations have lapsed due to non-renewal. This section allows for the restoration of a lapsed mark within one year from the date of expiry. However, restoration is subject to certain conditions and payment of prescribed fees.
IV. The Role of the Court:
In this case, the Hon'ble High Court of Delhi played a decisive role by directing the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This action was likely taken to uphold the principle that a trademark registration should not endure indefinitely without active renewal by its owner. By removing the mark from the register, it signals that the mark is no longer valid unless successfully restored within the one-year grace period.
The Concluding Note:
The case under discussion highlights the importance of diligently renewing trademark registrations within the specified time frame to maintain their legal status and exclusivity. While trademark owners are granted a one-year restoration window after the expiry date, failure to take advantage of this opportunity can result in the removal of the mark from the Register of Trademarks.
Case Law Discussed:
Date of Judgement:27/03/2023
Case No. C.O. (COMM.IPD-TM) 487/2022
Neutral Citation No: N. A.
Name of Court: Delhi High Court
Name of Hon'ble Judge: Amit Bansal, H.J.
Case Title: Dinesh Kumar Mittal Vs Pragya Trading Company
Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Advocate Ajay Amitabh Suman,
IP Adjutor:Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com,
Mob No: 9990389539
