Background and Dispute
The petitioner, M/s Zine Davidoff S.A., challenged an order passed by the Intellectual Property Appellate Board (IPAB) on 9 March 2012, which removed its registered trademark ‘DAVIDOFF’ (No. 454875 in Class 25) from the Register. The basis for removal was the alleged failure to renew the mark within the statutory deadline, thus treating it as lapsed. The petition was brought before the Delhi High Court seeking restoration of the mark.
Timeline of Renewal Attempts
The original trademark application was filed in May 1986 and was valid until May 1993. However, the registration certificate was issued only in December 1997. Upon receipt, the petitioner applied for renewal in June 1998, which was within the statutorily allowed six-month window post-expiry. A second renewal was sought in April 2001, covering the period from 2000 to 2007. Therefore, the petitioner argued that there was no break in renewal and that the trademark never actually lapsed.
Procedural Irregularity by Trademark Registry
The petitioner argued that the mandatory notice under Form O3—as required by Section 25 of the Trade Marks Act, 1958 and Rule 64 of the Trade Marks Rules, 1959—was never issued prior to the removal of the trademark from the Register. The High Court had previously directed the Trademark Registry to confirm issuance of the notice. An affidavit filed by the Registry later admitted that no records of issuing such a notice were available.
Legal Precedents and High Court's Reasoning
The petitioner relied on several judgments, including Union of India v. Malhotra Book Depot, CIPLA Ltd. v. Registrar of Trade Marks, and Epsilon Publishing House v. Union of India, which established that failure of the Trademark Registry to follow due procedure should not prejudice the trademark proprietor. The High Court noted that it had followed this line of reasoning in multiple recent cases, where it directed restoration of marks removed without due process.
Court’s Findings and Directions
The Delhi High Court found that the IPAB’s decision did not take into account the evolving legal position, particularly regarding the mandatory nature of issuing Form O3 notices. In the absence of any proof that such a notice was issued, the petitioner could not be penalized. Therefore, the court directed that the trademark ‘DAVIDOFF’ be restored to its original position in the Register and that the necessary database corrections be made by the Trademark Office.
Conclusion
The judgment emphasized that procedural lapses by the Trademark Registry cannot result in loss of rights for a diligent trademark owner. It reaffirmed the obligation of authorities to follow statutory processes before removing a registered mark.
Case Details
Case Title: Zine Davidoff S.A. Vs. Union of India and Anr.
Date of Order: 22 April 2025
Case No.: W.P.(C)-IPD 57/2021
Neutral Citation: DHC:2025:2991
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice Amit Bansal
