APEXSEALS Owner Gets Two Weeks To Seek Renewal As Delhi HC Says Registrar Needed Notice Before Removal Despite Registration After Expiry

The petitioner applied to register “APEXSEALS” in Class 17 on 24 December 1996, claiming use since 2 March 1993.

The mark was registered on 10 February 2007, after its ten-year validity period—calculated from the application date—had expired on 24 December 2006.

The Registrar later removed the mark for non-renewal without issuing a Form O-3 notice.

In response to the petitioner’s requests, the Registrar stated that such notice was inapplicable because the mark had been registered after its validity period had expired.

The petitioner sought quashing of the removal and restoration of the mark, while the Registrar argued that Rule 64(3) required renewal within six months of actual registration and did not require a Form O-3 notice in these circumstances.

Section 25(3) of the Trade Marks Act, 1999 requires the Registrar, at the prescribed time before expiry, to notify the registered proprietor of the expiration date and the conditions for renewal; removal for non-renewal is conditional on the prescribed notice and failure to comply with its requirements.

Rule 64(1) of the Trade Marks Rules, 2002 prescribes notice in Form O-3 before expiry, while Rule 64(3) addresses a mark registered after its renewal date and allows renewal within six months of actual registration.

Applying Union of India v. Malhotra Book Depot (Division Bench) and Gopal Ji Gupta v. Union of India, the Court held that removal without the statutory notice is impermissible; rules cannot override the parent Act, and removal of a registered mark must follow the prescribed procedure.

The Court held that Mankind Pharma Limited v. Registrar of Trade Marks did not displace that binding precedent.

The Court accepted that the renewal date preceded the certificate of registration, so the petitioner could not have applied for renewal before registration and Rule 64(3) contemplated renewal within six months of the actual registration date.

But that circumstance did not exempt the Registrar from the notice requirement under Section 25(3).

Following Malhotra Book Depot and Gopal Ji Gupta, the Court reasoned that non-renewal does not automatically authorize removal: the statutory notice is a mandatory procedural condition, and removal has significant consequences for the proprietor’s rights.

The petitioner’s awareness, upon registration, that the original validity period had expired did not cure the absence of notice.

Once registration had been granted, the information needed for a notice was available, and the Registrar could not remove the mark without first calling upon the proprietor to renew it.

It allowed the petition and directed the petitioner to file a fresh Form TM-R with the prescribed fee within two weeks; the Registrar was directed to accept and process the application in accordance with the Rules.

The Court did not itself order immediate restoration of the mark.