Section 25 of The Trade Marks Act, 1999
The present paper deals with the nature of the sending of notice by the Registrar under section 25 of the Trade Marks Act, 1999 enacted by the Parliament of India.
The section 25 i.e. Duration, Renewal, Removal and Restoration of Registration falls in the periphery of the Chapter-III titled “Procedure for and Duration of Registration”.
The question for consideration before the author pertains to the proposition that what would be the implications if the Registrar fails to send notice to the concerned proprietor of the registered trademark under section 25 (3) in relation to the renewal of the registered trademark? Sub-section 2 of the section 25 of the Trade Marks Act clearly indicates that protection of the trademark, being for a period of 10 years, may be renewed from time to time in accordance with the provisions of the section. The phrase ‘in accordance with the provisions of this section’ gives, rather allocates, a conditional nature to the aspect of renewal of trademark in the sense that a trademark may be renewed if the provisions of the section 25 are followed in accordance with the procedure prescribed therein. It is pertinent to mention here that the interpretation of the provisions of the Trade Marks Act, 1999, is strictly in accordance with the words used/mentioned therein.
If a registered proprietor of a trademark files an application in the prescribed manner and within the prescribed period, subject to payment of the prescribed fee to the Registrar, the Registrar shall renew the registration of the trademark. The renewed registration of the trademark shall be for the period of 10 years from the date of expiration of the original registration or of the last renewal of the registration (section 25(2)). But what would be the scenario if the registered proprietor, whose tenure of trademark protection is going to get over? Subsection 3 of section 25 of The Trade Marks Act 1999, provides for such a situation. It provides that at the prescribed time before the expiration of the last registration of a trademark the Registrar shall send a notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to the payment of fees and otherwise upon which a renewal of registration may be obtained. It is worthy to take into account the language of the subsection 3 of section 25 here. It clearly puts forth that there are certain conditions mandatory in nature keeping in mind the object of the Trade Marks Act 1999, upon which a renewal of registration may be obtained by the registered proprietor of that trademark. The said conditions amounting to a mandatory provisions are as follows-
· Requirement on the part of the Registrar to send a notice in prescribed manner to the registered proprietor of the date of the expiration and the conditions as to payment of fees and otherwise. It is important to note that as per section 25(2) renewal can only be obtained if the prescribed fee is paid, the notice of which has to be given to the registered proprietor buy the Registrar. Rule 64 of the Chapter-II titled ‘Renewal of Registration and Restoration’ mentions about the ‘notice before removal of trademark from register’. It provides that at a date not less than one month and not more than three months before the expiration of the last registration of a trademark, if no application in form TM-12 for the renewal of the registration together with the prescribed fee has been received, the Registrar shall notify the registered proprietor or 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 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. If we analyse the form O-3 as provided in schedule-3 of the Trade Marks Act 1999, titled ‘Certificate of Registration of Trademarks’, the particulars of the same are as below-
1) compliance of sending notice under section 25(3)
2) time of expiration
3) intimating about the opportunity or option to renew the registered trademark for a further period of 10 years
4) the indication that upon sending the notice in the form O-3 and the receipt of the same by the registered proprietor, the Registrar expects receipt of an application on the enclosed form T-12 accompanied by the prescribed fee.
5) mentioning the date by which upon the receipt of the form O-3 (as it logically implied, the application in form TM-12 and the prescribed fee can be received by the Trademark Registry for considering renewal of the Trademark)
The provisions of the section 25 (3) also makes it clear that the Registrar shall not remove the trademark from the register if the application is made in the form TM-12, the notice in relation to which has to be given by the Registrar as per Rule 64(1). So the above discussion makes it lucid that sending of notice by the Registrar under section 25(3) is a mandatory requirement and not following the same would not result in the implications detrimental to the interest of the registered proprietor of the trademark. If this is allowed to be done, it would be against the basic jurisprudence behind the concept of Trademarks as well as aforementioned relevant provisions of the Trade Marks Act 1999 giving an expression to the protection of consumers and ensuring quality of products and services to them by associating the fruits of the intellect with their source/producers. If the requirement of sending notice to the registered proprietor of the trademark is made directory or not given mandatory characteristic, it would often lead to consequences of bringing a trademark in ‘public domain’ which would not be in the interest of consumers. It is because it takes time, sincere efforts on the part of the producer to maintain consistency in the quality of products and services that he provides to the consumers. If that is allowed to be brought out of the domain of protection, the said quality and consistency would not yield desired fruits for the producers as they would stand to lose their goodwill and thus, suffer economically and the consumers would have the trademark associated with a quality not attached with the prior benchmark of the same.
In case the Registrar fails to send notice to the proprietor of the registered trademark in relation to expiration and renewal of the trademark that would be expired if the conditions mentioned in the statute and conveyed in terms of notice to the proprietor by the Registrar, then the trademark should be allowed to be renewed as and when the proprietor of the trademark fulfils all the conditions that are pre-requisites of the renewal of trademark protection, as soon as he comes to know of that but within the period stipulated in section 25. It is pertinent to mention here that the period within which the conditions of renewal have to be fulfilled by the proprietor of the registered trademark should start from the date when it comes to the knowledge of the proprietor that his trademark is no more in the periphery of Intellectual Property Right Protection. Here the time lost due to not conveying of the notice by the Registrar to the proprietor of the registered trademark regarding the renewal of the said trademark should be excluded. The purpose of the trademark protection is to protect such marks that are beneficial to the consumers in the way that the consumers can identify the product with its producer through the trademark. If the omission to send a mandatory notice to the proprietor of the registered trademark on the part of the Registrar is allowed to be taken as an excuse to remove the name of the registered trademark from the register would defeat the very purpose of the Trade Marks Act, overlooking its main objective.
So, in the light of the aforementioned, in the opinion of the author, the requirement imposed on the Registrar to send a notice to registered proprietor in a prescribed manner of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained by the proprietor or any other person mentioned in the statue, amounts to be mandatory in nature. The said requirement should be complied with by the Registrar and, if, it is somehow not complied with for the reason beyond the control of the registered proprietor, then the trademark should not be removed from the register without affording an opportunity to the registered proprietor after the situation come to his knowledge. The registered proprietor if pays the prescribed fee and fulfils other conditions for renewal of the trademark after it has finally come to his notice; the trademark ought to be renewed again for protection for a period of ten years from the date of expiration of the original registration or of the last renewal of registration of the trademark, as the case may be.
The basic principle behind this approach is that the scheme of section 25 and other relevant sections and rules of the Trade Marks Act, 1999 is that the Registrar is under a mandatory duty to provide the proprietor of the registered trademark with a sufficient notice, the particulars of which have been provided in the act itself in the rules and forms, specifying the prescribed fees to be paid by the registered proprietor and the other conditions to be fulfilled by the registered proprietor. It is upon the receipt of this notice, that the proprietor is supposed to get knowledge of the impending removal of his registered trademark from the register, if he does not satisfy the conditions specified in the notice. Thus, that notice is undoubtedly a pre-requisite to hold the proprietor of the registered trademark responsible for non-compliance of all the conditions (mentioned in that notice only and required by law to be forwarded to proprietor) in relation to what he has to do in order to renew the trademark. It is subsequent to non-compliance of those conditions mentioned in notice that the Registrar may ponder over removing or may remove the trademark from the register. So if the basic and the mandatory requirement of sending the notice to registered proprietor is not fulfilled by the Registrar, there arises no question of making the registered proprietor of the trademark responsible for non-compliance and thus, the removal of the trademark from the registered by the Registrar would be without any legal sanctity and basis. This defect can be only cured by letting the registered proprietor know of the pending renewal of the trademark and affording him an opportunity to abide by the conditions of the renewal that were supposed to be communicated to him by the Registrar through a mandatory notice but were not sent to him for reasons beyond his control.
The aforementioned analysis is based on the basic jurisprudence behind the concept of Intellectual Property Rights protection through trademarks, and the lucid language of the statute namely, the Trade Mark Protection Act, 1999.
The author can be reached at: firstname.lastname@example.org