"MILTON" Resurrected: High Court Overturns Trademark Removal
- Soumya Juneja
- Sep 23
- 3 min read
INTRODUCTION
The case of Rakesh Kumar Mittal v. Registrar of Trademark[1] culminated in a significant decision by the Delhi High Court, which granted a writ petition filed by the Petitioner, Rakesh Kumar Mittal (proprietor of M/s. Mittal Electronic Industries). The Court's order was a directive to the Respondent, the Registrar of Trade Marks, compelled them to reverse the removal of the Petitioner’s specific trademark, 'MILTON'. The core of the dispute revolved around the administrative action taken by the Registrar of Trade Marks, which had led to the removal of the 'MILTON' trademark from the registry, a mark claimed and used by M/s. Mittal Electronic Industries. The exact reasons for the Registrar's initial removal action, non-renewal and procedural lapse, were challenged by the Petitioner in Court.
FACTUAL BACKGROUND
The Petitioner is engaged in the business of Microphones, Horns for Loudspeakers, Amplifiers, Loudspeakers and Transformers and Horn Units and Parts. The Petitioner filed for an application for the device mark ‘MILTON/ ’ in 1994, under Application No. 627446. In 2003, the registration certificate was issued for the said mark.[2]
The Petitioner did not renew the trademark in due time and as per Section 25 of the Trade Marks Act, 1999. Section 25(3) of the TM Act states that the Registrar is obligated to provide the proprietor of a registered trademark with advance notice of its impending expiration. This communication must specify the expiry date and outline the conditions for renewal, such as the payment of fees. Additionally, failure to satisfy these conditions by the expiration time grants the Registrar the discretion to remove the mark from the register.
Notwithstanding this, a sub-provision prevents such removal. If within the six-month period immediately following the expiration, the proprietor files the designated application and pays the prescribed fees along with a surcharge, the Registrar is mandated to renew the registration. This renewal will be valid for a subsequent term of ten years. It is obligatory for the registrar to abide by this provision and serve the Petitioner with a Form O-3 (now referred to as Form RG-3) Notice in correspondence with Section 25(3).[3]
ANALYSIS AND REASONING
According to the Petitioner in this case, the Notice was not filed by the Respondent within the prescribed period and thus, the registrar had no authority to remove the mark. Additionally, the Petitioner even filed an RTI application to ascertain the same and determined that the Form O-3 Notice was never served upon the Petitioner.
The Court stated that it is mandatory to read Section 25(3) with Rule 64(1), where the prescribed time is at least one month and not more than three months from the date of expiration. This precondition is a norm covered by various other jurisdictions as well. Even in the case of Union of India v. Malhotra Book Depot[4], the Division Bench of this Court stated that when the Act provides the procedure in a comprehensive manner then holding the procedure to be non-binding is not justifiable. Not only in this case, but other cases like: Cipla Ltd. V. Registrar of Trade Marks & Anr., Kleenage Products (India) Pvt. Ltd. v. Registrar of Trade Marks & Ors,[5] Promoshirt SM. Ltd. v. Registrar of Trade Marks,[6] Gopal Ji Gupta v. Union of India[7] and Ashok Bhutani v. The Registrar of Trade Marks & Anr.[8], reiterated the same legal position that expiration of a trademark by lapse of time does not ipso facto justify its removal from the TM Register.[9]
JUDGMENT
Looking at the present facts, the Court held that the trademark was wrongly removed from the Register as the Respondent did not comply with the due process in compliance with Section 25(3) of the TM Act read with Rule 64(1) of the TM Rules. Since, the Respondent did not send the Form O-3 Notice to inform the Petitioner about the impending expiration was unsustainable.
The Court stated that, “Thus, since the petitioner was not informed about the impending expiration of the registration and the conditions for its renewal, the aforesaid trademark was wrongly removed from the Register. Since the respondent did not comply with the mandatory procedural requirement/ precondition, the removal of the trademark MILTON from the Register is ex-facie illegal”.
CONCLUSION
The Court ruled in favour of the Petitioner, ordering the Respondent to restore and reinstate the ‘MILTON’ trademark on the register. This decision establishes a strict procedural framework, ensuring that there is no arbitrary removal of marks and the same is carried out through due process of law. This not only prevents unjust removal of marks but also upholds the principles of fairness and transparency.
Soumya Juneja
Associate
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