Parveen Kumar Gulati Trading As Apexseals vs Registrar Of Trademarks

$~25
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Delivered on: 28.10.2026
# CNR No. DLHC010993742025
+ W.P.(C)-IPD 63/2025
PARVEEN KUMAR GULATI TRADING
AS APEXSEALS .....Petitioner
Through: Ms. Priyanshi Gupta, Mr. Kunal Khanna,
Mr. Sakshmit Mathur and Mr. Parth
Dabas, Advs.
versus
REGISTRAR OF TRADEMARKS .....Respondent
Through: Mr. Satya Ranjan Swain, CGSC with Mr.
Kautilya Birat, Mr. Sanskar Gupta and
Mr. Tushar Hazrati, Advs.
CORAM:
HON'BLE MR. JUSTICE VIKAS MAHAJAN
JUDGMENT
VIKAS MAHAJAN, J (ORAL)
1. The present petition has been filed by the petitioner under Article 226 of
the Constitution of India seeking following reliefs:
a) Issue a writ of Certiorari or any other appropriate
writ, order or direction, quashing the impugned removal of
the Petitioner's registered trade mark "APEXSEALS"
bearing Application No. 746049 from the Register of Trade
Marks;
b) Issue a writ of Mandamus or any other appropriate
writ, order or direction, directing the Respondent to forthwith
restore the Petitioner's said trade mark on the Register of
Trade Marks with continuity of rights;
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 1 of 19

c) Direct the Respondent to permit the Petitioner to file
renewal upon payment of requisite fee”
2. The case set out by the petitioner in the present petition is that the
petitioner had applied for the registration of the trademark “APEXSEALS” with
the respondent/Registrar of Trademark, under Class 17 vide application no.
746049 on 24.12.1996, claiming user since 02.03.1993.
3. It is stated that the said application remained pending for several years,
and was ultimately advertised in the trademark journal no. 1339 dated
01.02.2006. Consequently, the mark was registered and a certificate of
registration bearing no. 604418 was issued to the petitioner on 10.02.2007 i.e.
after the expiry of the initial statutory period of ten years from the date of
application, in which the renewal has to be done.
4. It is further contended that after a change in the management and control
of the petitioner’s business, an internal audit revealed the aforesaid registration
of the petitioner’s trademark “APEXSEALS” has been removed from the
trademark register of respondent on the basis of non-renewal of the registration.
5. Mr. Kunal Khanna, learned counsel appearing on behalf of the petitioner,
submits that the validity of the registration of petitioner’s trademark was till
24.12.2006 i.e. for a period of ten years reckoned from the date of making of the
application for registration of trademark i.e. 24.12.1996, whereas the actual
certificate for registration of the trademark was issued to him only on 10.02.2007,
meaning thereby that prior to the issuance of certificate of registration, the
validity of the trademark had expired.
6. He submits that aggrieved by the action of respondent, on 24.04.2025, the
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 2 of 19

petitioner through its trade mark attorney, filed Form TM-M seeking a certified
1
copy of the Notice of expiration of last registration (Form O-3) and proof of
dispatch thereof.
7. In response, the respondent issued only a “legal use certificate” dated
19.05.2025, confirming removal of the trademark but failed to provide the
requested copies of the Form O-3 notice or proof of service.
8. Consequently, the petitioner filed an RTI application no.
CGPDT/R/E/25/00705 seeking details as to the issuance of the Form O-3 notice.
A reply was received to the said RTI application on 15.09.2025, wherein it was
mentioned that since the mark was registered after the expiry of it’s validity
period, the issuance of an O-3 notice is not applicable. The response dated
15.09.2025 to the said RTI application has been set out hereinbelow for the ease
of reference:
“With reference to your RTI application dated 18/08/2025,
seeking information regarding the status of the trademark
application No. 746049, the point-wise reply is as under:
As per the records, the subject application was
originally filed on 24/12/1996 and was registered vide
Certificate No. 604418 dated 10/02/2007 for a period
of ten (10) years from the date of application (i.e. from
24/12/1996 to 24/12/2006). Since the mark was
registered after the expiry of its validity period, the
issuance of an O-3 notice is not applicable, as such
notice is required to be issued within the prescribed
period prior to the due expiry of the validity of the
trade mark (Rule 64, 64 (3) of the Trade Marks Rules,
1
After the Trade Mark Rules, 2017 came into effect, the “Form O-3” Notice was replaced by the “Form RG-
3”.
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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2002).”
9. Submission of Mr. Khanna is that in terms of Section 25(3) of the Trade
Mark Act, 1999 (hereinafter, ‘the Act’) read with Rule 64 of the Trade Mark
Rules, 2002 (hereinafter, ‘the Rules’) the respondent is obliged to send a notice
in the prescribed manner to the registered proprietor of the mark, mentioning the
date of expiration of the mark and the condition as to payment of fees upon which
renewal of registration may be obtained, therefore, the respondent ought to have
issued a notice in terms of Section 25(3) of the Act read with Rule 64, which was
admittedly never sent to the petitioner.
10. In support of his submission, Mr. Khanna has placed reliance on the
decision of a Coordinate Bench of this Court in Gopal Ji Gupta v. Union of
India and Anr., W.P.(C) 7644/2017 dated 18.03.2019 which in turn relies on the
decision of the Division Bench of this Court in Union of India and Ors. v.
Malhotra Book Depot [DB], 2013 SCC OnLine Del 828 .
11. Per contra , Mr. Satya Ranjan Swain, learned CGSC appearing for the
respondent contends that in the situation like the present one, where the date of
renewal was prior to the date of registration, Rule 64(3) does not contemplate
giving of Form O-3 notice. In support of his contention, he has placed reliance
on the decision of this Court in Mankind Pharma Limited v. Registrar of Trade
Marks, W.P.(C)-IPD 8/2025 .
12. He submits on the date of registration i.e. 10.02.2007, the petitioner was
aware that the registration has already expired on 24.12.2006, therefore, the
petitioner cannot be allowed to contend that Form O-3 notice ought to have been
issued to him.
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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13. He further contends that in Form O-3 notice, the Registrar is required to
mention name of the registered proprietor, date of expiry of trademark as well as
the registration number, and these details were not in existence prior to the
registration of the mark. Therefore, there was no occasion to issue Form O-3
notice.
14. Elaborating further, he contends that Rule 64(1) contemplates that Form
O-3 notice is to be given at a date not less than one month, and not more than
three months, before the expiration of the last registration of the trademark. He
submits that since the registration had not been granted by that time, this
condition also, could not have been complied with by the respondent-Registrar
of Trademark.
15. Having heard the learned counsel for the parties and perused the record,
the short question that arises for consideration in the present petition is whether
the respondent/Registrar of Trade Marks could have removed the petitioner’s
registered trademark “APEXSEALS” bearing Application No. 746049 in
Class 17 from the Register of Trade Marks on the ground of non-renewal,
without issuing the prior statutory notice in Form O-3 as contemplated under
Section 25(3) of the Act read with Rule 64 of the Rules.
16. The foundational facts which are not in dispute are that: (i) the renewal of
mark became due on 24.12.2006 but the petitioner could not have applied for
renewal prior to 10.02.2007 when the trademark itself came to be registered, and
the certificate of registration was issued (ii) prior to the removal of petitioner’s
trademark from the Register of Trade Marks, no notice in Form O-3 under
Section 25(3) of the Act read with Rule 64 of the Rules was ever issued or served
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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upon the petitioner.
17. To appreciate the rival submissions of the parties, it is imperative to refer
to the relevant statutory provisions governing the duration, renewal, removal,
and restoration of registration of a trademark, which were in vogue when the
certificate of registration was issued to the petitioner, on 10.02.2007.
18. Section 25(3) of the Trade Marks Act, 1999 contemplates giving of notice
in the prescribed manner to the registered proprietor of the date of expiration and
the conditions as to payment of fees, and the same is set out herein below:
“25. Duration, renewal, removal and restoration of
registration.
(1) xxx xxx xxx
(2) xxx xxx xxx
(3) 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 conditions 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 mark from the register :
Provided that the Registrar shall not remove the trade mark
from the register if an application is made in the prescribed
form and the prescribed fee and surcharge is paid within six
months from the expiration of the last registration of the trade
mark and shall renew the registration of the trade mark for a
period of ten years under sub-section (2).”
(emphasis supplied)
19. Likewise, relevant Rule 63 to 66 of the Trade Mark Rules, 2002 are
extracted herein below:
“Renewal of Registration
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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63. —(1) An application for the renewal of the registration of a
trade mark shall be made on Form TM-12 and may be made at
any time not more than six months before the expiration of the
last registration of the trade mark.
(2) Such application for renewal must be filed by the person who
is the proprietor of the registered trade mark or his agent.
(3) If the proprietor, as set forth in the application for renewal
is not the same person or the same legal entity as the registered
proprietor, continuity of title from the registered proprietor in
whose name the last renewal was effected to the present owner
must be shown in the first instance by way of affidavit along with
supporting chain of documents.
(4) The Registrar may accept an application for renewal from
the managing trustee, executors, administrators and the like,
when supported by court order or other evidence of authority to
act on behalf of the present proprietor.
Notice before Removal of Trade Mark from Register
64. - (1) At a date not less than one month and not more than
three months before the expiration of the last registration of a
trade mark, if no application in Form TM-12 for renewal of the
registration together with the prescribed fee has been received,
the Registrar shall notify the registered proprietor or in the case
of a jointly registered trade mark each of the joint registered
proprietors and each registered user, if any, in writing in Form
O-3 of the approaching expiration at the address of their
respective principal places of business in India as entered in the
register or where such registered proprietor or registered user
has no principal place of business in India at his address for
service in India entered in the register.
xxx xxx xxx
(3) Where, in the case of a mark the registration of which (by
reference to the date of application for registration) becomes
due for renewal, the mark is registered after the date of renewal,
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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the registration may be renewed by the payment of the renewal
fee within six months of the actual date of registration and
where the renewal fee is not paid within that period the
Registrar shall, subject to rule 66, remove the mark from the
register.”
(4) The renewal of registration of a collective mark or a
certification trade mark shall be in Form TM-12 along with the
prescribed fee specified in the First Schedule.
Advertisement of Removal of Trade Mark from the Register
65. If at the expiration of last registration of a trade mark, the
renewal fees has not been paid, the Registrar may remove the
trade mark from the register and advertise the fact forthwith in
the Journal:
Provided that the Registrar shall not remove the trade mark
from the register if an application for payment of surcharge is
made under proviso to sub-section (3) of section 25 in Form
TM-10 within six months from the expiration of the last
registration of the trade mark.
Restoration and Renewal of Registration
66. An application for the restoration of a trade mark to the
register and renewal of its registration under sub-section (4) of
section 25, shall be made in Form TM-13 after six months and
within one year from the expiration of the last registration of
the trade mark accompanied by the prescribed fee. The
Registrar shall, while considering the request for such
restoration and renewal have regard to the interest of other
affected persons.
20. In the present case, the main contention of Mr. Swain, learned CGSC,
appearing for the respondent is that because the registration certificate was issued
on 10.02.2007, after the initial validity period calculated from the date of
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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application had already expired on 24.12.2006, the petitioner ought to have
applied for renewal within six months of actual registration under Rule 64(3) of
the Rules, and that in such a situation, the respondent was neither required nor
was in a position to issue a Form O-3 notice at a date not less than one month
and not more than three months before the expiration of the last registration, as
contemplated under Rule 64(1) of the Rules.
21. This Court notes that the aforementioned contention of Mr. Swain stands
squarely covered by the decision of a Coordinate Bench of this Court in Gopal
Ji Gupta (Supra) wherein similar facts were involved. In the said case, the
petitioner, trading as M/s Kiran Textiles, applied for the registration of the
Trademark “BINACA” (Registration No. 473696) in Class 25 on 15.06.1987
under the Trade and Merchandise Marks Act, 1958. The mark being valid for
seven years, became due for renewal in 1994, however no steps were taken by
the petitioner as the mark was only registered vide certificate dated 12.03.1998,
which is evidently after the renewal date of the trademark.
22. Consequently, the petitioner first filed the renewal fee in 2001. In the
meanwhile, on account of enactment of the Trademarks Act, 1999, the validity
period of a trade mark registration was increased to ten years. Thereafter, despite
the petitioner’s efforts, the actual date of expiry was not informed to him, as the
respondent’s website merely showed the mark as registered without providing
expiry details, and the Registrar failed to issue the mandatory notice in Form O-
3 as required under Section 25(3) of the Act read with Rule 64(1) of the
Trademark Rules, 2002. Upon realizing in May 2015 from the respondent’s
website that renewal was due, the petitioner filed a renewal application in Form
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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TM-12 on 08.06.2015, which the respondent rejected as time barred on
15.06.2015, noting that no renewal fee had been filed after 2001. The respondent
in the said case had taken a similar plea that as the petitioner received the
registration certificate after the expiry of the first renewal due date, the renewal
application/fee was required to be deposited within a period of six months from
the date of registration, and that a notice under Form O-3 was not required to be
issued.
23. Formulating the question as to whether the respondents could deny the
consideration of the petitioner’s application for renewal of the mark on the
ground that the six-months period for filing the renewal application/deposit of
fee had expired, the Coordinate Bench of this Court held that the answer has to
be in the negative. The said answer was premised on the reasoning that the denial
of consideration of the application for renewal has the effect of removing the
mark of the petitioner from the Register of Trademarks, which is only
permissible if a notice is given to the petitioner in Form O-3 as contemplated
under Section 25 of the Trade Marks Act. Below extracted is the relevant portion
from the decision of Gopal Ji Gupta (supra):
“11. A plea was taken by the learned counsel for the
respondents that nothing precluded the petitioner to apply for
renewal in the year 1998 itself. In this regard, Mr Bhatia has
taken a plea that the petitioner had deposited the fee for renewal
in the year 2001 for renewal of the Trademark, post 1994. In
support of his submission, he had relied upon the document at
page 40 of the paper book which is a copy of the note sheet of
the file of the respondents wherein this aspect has been
acknowledged . The plea of the learned counsel for the
respondents was that the same was after a delay of three years
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 10 of 19

from the date of registration. According to him, the said
renewal application/fee needs to be deposited within a period
of six months. If that be so, the issue which arises for
consideration is whether the respondents can deny the
consideration of the application of the petitioner for renewal
of the mark as the period of filing application for
renewal/deposit of fee had expired. The answer has to be
“NO” for the reason that denial of consideration of
application for renewal has the effect of removing the Mark
of the petitioner from the Register of the Trademarks i.e.
something which is only permissible if a notice is given to the
petitioner under section O-3 as has been contemplated under
Section 25 of the Trademarks Act.”
(emphasis supplied)
24. In Gopal Ji Gupta (supra), the Coordinate Bench relied upon Division
Bench judgment in Malhotra Book Depot [DB] (supra), wherein the Division
2
Bench crystalized the observations of the learned Single Judge in the judgment
assailed before it in the appeal, in the following terms:
“4. The learned Single Judge allowed the writ petition
observing/finding/holding:
(a). that the Registrar in its counter affidavit, in response to
the unequivocal plea in the writ petition, that the Notice in
Form O 3 was not received by the respondent, had merely
stated that removal of the mark could not have been done
without following the due process as per the provisions of law
and had thus made only a presumptive statement; further, the
Registrar in para 7 of the counter affidavit had admitted that
in various cases O-3 Notices had not been issued; the learned
Single Judge thus concluded that in the respondent's case O-
3 Notice had not been issued as provided for in Rule 67;
2
Malhotra Book Depot v. Union of India, 2011 SCC OnLine Del 5086
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
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(b). that under Section 25 of The Trade and Merchandise
Marks Act, 1958 (the Act) (which was applicable in the year
1984 when the Registration of the mark of the respondent
expired), the application for renewal of the registration could
be made upon receipt of the Notice in Form O-3;
(c) . that the Registrar could remove the Trademark from the
Register and advertise the factum of removal in the Journal
only after a Notice in Form O-3 had been issued;
(d). that the removal of the registered Trademark from the
Register entails civil consequences for the registered
proprietor of the mark;
(e). the said removal of the registered Trademark cannot be
done without prior notice to the registered proprietor in the
prescribed form ;
(f). mere expiration of the registration by lapse of time and
the failure of the registered proprietor of the Trademark to
get the same renewed, by itself, does not lead to the
conclusion that the same can be removed from the Register
by the Registrar of Trade Marks without complying with the
mandatory procedure prescribed in Section 25(3) of the
Act r/w Rule 67 of the Rules ;
(g). removal of the registered Trademark from the Register
without complying with the mandatory requirements of
Section 25(3) would itself be laconic and illegal ;
(h). that the plea of the Registrar that the application for
restoration and renewal of the mark was beyond the time
prescribed in Section 25(4) and Rule 69 could not be
accepted because the removal of the mark from the Register
was not in terms of Section 25(3) r/w Rules 67 and 68 ;
(i). that under the Act and the Rules, mere lapse of the time
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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does not result in its removal and for which Notice in Form
O-3 is required to be given;
(j). that in the facts of the present case, since the mandatory
Notice in Form O-3 had not been given prior to the removal
of the mark, the application seeking its restoration and
renewal could not be said to be barred by time .”
(emphasis supplied)
25. The Division Bench in Malhotra Book Depot [DB] (supra), also explicitly
held that a mark cannot be removed from the Register of Trademarks without
compliance with the provisions of Section 25 and Rule 67 of the Trade and
Merchandise Marks Rules. The Court observed that Section 25(3) cannot be
interpreted as permitting removal without the condition of sending of notice
being complied with. It was also held that removal for non-renewal has not been
made automatic and that the Rules are subservient to the Act and cannot deviate
from the provisions of the parent Act. It was thus, held that permitting removal
de hors compliance with the notice requirement would be contrary to
Section 25(3).
26. Relevant part of the decision in Gopal Ji Gupta (supra), wherein the
decision in Malhotra Book Depot [DB] (supra) has been explained and quoted,
is reproduced hereinbelow for ready reference:
“ 13. Suffice it to state that the Division Bench has upheld the
judgment of the learned Single Judge on the aspect that a
Trademark can be removed from the Register of Trademarks
only after complying with the mandatory procedure prescribed
under Section 25 read with Rule 67 of the Rules of 1959 . The
Division Bench also has in paras 16 to 20 held as under:
“ 16. Section 25(3) providing for sending of a notice
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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prescribes removal of the trademark only “if” at the
expiration of the time prescribed in the notice, the
conditions required therein to be fulfilled have not been
complied. The Supreme Court recently in Head Master,
Lawrence School Lovedale v. Jayanthi Raghu (2012) 4
SCC 793: AIR 2012 SC 1571 held that the use of the word
‘if’ is meant to indicate a condition. Thus, Section 25(3)
cannot be interpreted as permitting removal without the
condition of sending of notice being complied with .
Earlier also, a Full Bench of the Punjab and Haryana
High Court in Harbans Singh v. State of Punjab AIR 1987
P&H 19 held that the word ‘if’ is always expressive of a
condition.
17. The scheme of the Rules regarding renewal of
registration and restoration also suggests so. Rule 66
permits an application for renewal of registration to be
made any time within six months before the expiration of
the last registration. However, the removal for non-
renewal has not been made automatic. If the registered
proprietor does not make an application for renewal till
two months prior to the expiration of the last registration,
the Registrar is required to notify the registered proprietor
of the approaching expiration (under Rule 67) and is to
remove the trademark from the register only thereafter, as
is evident from Rule 68 having been placed after Rule 67.
If removal pursuant to non-renewal was to be de hors the
notice for removal, Rule 68 would have followed Rule 66
and not Rule 67. Though Rule 68 permits removal upon
expiration of last registration and non-payment of
renewal fee and does not make the same dependent upon
compliance of Rule 67 but to read Rule 68 as permitting
removal de hors compliance of Rule 67 would be contrary
to Section 25(3) which as aforesaid permits removal only
if at the expiration of the time prescribed in the notice
required to be sent thereunder, the registered proprietor
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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has not applied for renewal. It is a settled principle of law
that rules framed under a statute cannot override the
statute. In Ispat Industries Ltd. v. Commissioner of
Customs (2006) 12 SCC 583 it is held that the Rules are
subservient to the Act and cannot deviate from the
provisions of the parent Act. It was further held that the
Rules are created to serve the object of the legislation and
if there are two possible interpretations of a Rule, one
which sub-serves the object of the provision in the parent
statute ought to be adopted, as an interpretation to the
contrary will make the Rule ultra vires the Act.
18. We are therefore unable to appreciate the view of the
IPAB that the two i.e. removal and renewal have no
relation with each other.
19. The Act and the Rules have prescribed the manner in
which the trademark, which is universally identified as
intellectual “property”, is to be removed from the register
and which removal has the effect of divesting the
registered proprietor of his property rights in the
registered trademark. Once the matter is seen in this
light, we fail to see as to how a registered proprietor can
be divested of his property rights in the registered mark
in any manner other than the manner prescribed under
the Act and the Rules. The Constitutional principles
applicable to tangible property would apply to intangible
intellectual property also and which bar a person from
being deprived of his property save in the manner
prescribed by law. The Constitution Bench of the Supreme
Court recently in K.T. Plantation Pvt. Ltd. v. State of
Karnataka (2011) 9 SCC 1 held that the expression
‘Property’ in Article 300A which proclaims that no
person can be deprived of his property save by authority
of law meaning thereby that a person cannot be deprived
of his property merely by an executive fiat without any
specific legal authority or without the support of law made
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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by a competent legislature, is confined not to land alone,
but includes intangibles like copyrights and other
intellectual property and embraces every possible interest
recognised by law. In Thukral Mechanical Works (supra)
also it was held that registration of a trademark confers a
very valuable right and removal of a mark from the
register takes away the valuable right of a registered
proprietor and has civil or evil consequences and therefore
can be done only when the conditions laid down therefor
are satisfied. It was yet further held that as removal takes
away somebody's right, it deserves strict construction.
20. The next question which arises for consideration is,
what would be the effect of a removal from the register,
without following the prescribed procedure. Section 25(4)
makes the period of one year, prescribed for restoration of
the mark to the register and renewal thereof, begin from
the expiration of the last registration and not from the
date of removal. We find it strange that though the right to
restoration accrues on removal but the time prescribed to
apply for restoration is from the expiry of the last
registration. What will happen if removal itself is after one
year from the expiry of the last registration as is the case
here. Section 25(4) if literally read, applies only if the mark
has been removed. If it were to be held that under Rule 66
renewal has to be applied for only within six months prior
to the expiration of the mark and not after the expiration,
then owing to the mark being not removed, the registered
proprietor would not be entitled to avail of Section 25(4).
The period of one year provided under Section 25(4) for
applying for renewal would then become illusory. Section
25(4) can thus be held to be applicable only where removal
is simultaneous to the expiration and not where removal is
not so and is effected much after the date of expiration, as
in the present case. Neither the Act nor Rules prescribe any
limitation for applying for restoration and renewal in a
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
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situation where the removal of the mark from the register
is without issuing the notice in Form O-3. In the absence
of any limitation having been prescribed, the only
inference is that such application can be made at any time
and in the decision whereon the LPA 564/2012 Page 23 of
28 Registrar would be entitled to take into consideration
the relevant factors such as whether the same or a similar
mark has in the interregnum being registered by any other
person, etc.
14. In view of the position of law, it is clear that the mark
cannot be removed from the Register of Trademarks without
compliance with the provisions of Section 25 and Rule 67 of
the Rules of 1959 which is akin to Rule 64 of the Trademarks
Rules, 2002, which were in vogue when the impugned action
was taken and there is no dispute that such a procedure was
not followed .”
(emphasis supplied)
27. In view of the law exposited in the above decisions, the respondent’s
contention that Rule 64(3) of the Rules does not require the issuance of a
Form O-3 notice where the renewal date falls prior to the date of registration,
cannot be accepted.
28. Further, the contention by Mr. Swain, that because the petitioner was
already aware on the date of registration i.e. 10.02.2007 that the trademark had
expired on 24.12.2006, the petitioner cannot contend that a Form O-3 notice
ought to have been issued, is only to be noted to be rejected. As held in Malhotra
Book Depot [DB] (supra) , the mere expiration of a registration by lapse of time,
coupled with the failure of the registered proprietor to get the trademark renewed,
does not by itself lead to the conclusion that the mark can be removed from the
Register by the Registrar of Trade Marks without complying with the mandatory
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 17 of 19

procedure prescribed under Section 25(3) of the Act read with the Rules.
29. The further submission of Mr. Swain, that since the relevant details
required to be mentioned in the Form O-3 notice namely, the name of the
registered proprietor, the date of expiry of the trademark, and the registration
number, were not in existence prior to registration, the requirement of issuing a
Form O-3 notice under Rule 64(1) could not have been complied with by the
Registrar of Trade Marks, is also devoid of substance.
30. Once the mark was registered and Certificate of Registration bearing No.
604418 was issued on 10.02.2007, all the aforesaid details came into existence
and were available. Therefore, even if the petitioner did not apply for renewal
within six months from the actual date of registration i.e. 10.02.2007, the
respondent could not have removed the petitioner’s mark from the Register of
Trade Marks without first issuing a Form O-3 notice as contemplated under
Section 25(3) of the Act and calling upon the registered proprietor to renew the
mark, as laid down in the decisions referred hereinabove.
31. Insofar as the reliance placed by Mr. Swain on the decision in Mankind
Pharma Limited (supra) is concerned, the same does not come to the aid of the
respondent in view of the binding precedent of the Division Bench of this Court
in Malhotra Book Depot [DB] (supra), followed by the Coordinate Bench in
Gopal Ji Gupta (supra) under similar facts where the giving of Form O-3 notice
was held to be mandatory despite the certificate of registration having been
issued after the expiry of the initial validity period of the trademark.
32. Accordingly, the present writ petition is allowed and the petitioner is
permitted to file afresh Form TM-R for renewal in respect of his trademark, along
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 18 of 19

with the prescribed fee, within a period of two weeks from today. The respondent
shall accept such Form TM-R and process the same in accordance with the Rules.
33. The writ petition, along with pending applications, if any, stands disposed
of in the aforesaid terms.
VIKAS MAHAJAN, J
OCTOBER 28, 2026/ aj/AA
Signature Not Verified
Digitally Signed
By:NARENDRA SINGH
ASWAL
Signing Date:31.10.2026
19:35:07
W.P.(C)-IPD 63/2025 Page 19 of 19