If the renewal period expires, the proprietor may apply for restoration. However, such requests must be made from 6 months to 1 year after the expiry of the registration. The owner must complete the prescribed Form [TM-13] to request rehabilitation.
Upon receiving such requests for renewal of a trademark, the Registrar shall also advertise the mark and invite objections from persons who have reason to object to the mark for restoration. After the expiration of the prescribed waiting period, if no objection was indicated on the registered mark, then the mark will be entered in the register of trademarks. Further, the entry in the trademark register will confirm that the mark has been renewed for ten years.
The statutory remedy only provided for a period of 6 months to one year for such expiration. If a trademark has been expired for longer than that, it is removed from the Trademark Registry. Although, the proprietor can register the trademark again if any other enterprise does not use it since its expiration.
PROVISION FOR RESTORATION OF TRADEMARKS:
There are several cases where the registered mark was removed from the register of trademarks. These reasons are carefully considered before removal, and finding a second proprietor’s opportunity is difficult in most cases. However, certain circumstances may require a second hearing. In those cases, the Trademarks Act sets out provisions that assist and allow the owner to repay a token. So trademark refunds can work in a few cases, such as no renewal during the actual or previous registration.
The Trademarks Act of 1999 provides another provision for a trademark proprietor to protect his trademark. Under section 25 (4) of the Act, if the proprietor applies to restore his mark within one year from the last registration of the mark with the prescribed fee, the mark will be considered for restoration. The Registrar, when considering a request for the refund of an expired trademark, will be regarded as the interests of other affected persons.
Upon returning an expired trademark, the notice must be sent to the proprietor by the Registrar for a refund. Moreover, the mark must be advertised in the Official Journal, and the advertisement is made to invite any objection to the action taken. If a dispute arises, the Registrar will take action. Otherwise, the trademark is returned for another ten years on behalf of the owner.
PROVISION FOR WRIT PETITION:
It is important to note that submitting a notice under 25 (3) is very important. If O3 notice was served under section 25 (3) to the Registrar, then the proprietor has a right to appeal in the High Court as a letter of appeal.
This written request serves as a challenge to the relevant legal process. The prescribed procedure is not followed if the notice is not delivered, so the cancellation of the mark is stopped. This appeal requesting a hearing puts a burden on the mark proprietor to obtain and produce proof of non-receipt of the notice. If the founding criteria are reviewed, then the Registrar must dispute the dispute. However, the first responsibility rests with the applicant/owner. The whole process becomes void if the O3 notification is not issued.
RELATED CASE LAW:
Let us study the relevant case to understand the law and the process that dictates Trademark restoration. The present case was decided on 27 February 2013 by the Delhi High Court. In contrast, the case was about the restoration of the Malhotra Book Depot trademark (Respondent).
The defendant had a registered trademark that was not renewed since 1984. Twenty-six years after the expiry of the trademark, the defendant applied for its reintroduction and renewal. The Trademark Registrar did not approve this application. The applicable law in 1984 at the time of the expiry of the mark was the Trade and Merchandise Marks Act, 1958 and not the Trademarks Act 1999. The matter was on the requirement of an official notice on Form O-3 that did not comply as mentioned under the rules. The present notice reminded the Respondent that their registration is expired and may not be renewed. Accordingly, the Respondent asserts that the Registrar cannot deny the trademark renewal at this time.
In this case, the Respondent did not receive notice in Form O-3. Despite the non-issuance of the register, he removed the mark from the register. The Court ruled that the mark could not be removed without due process as per the provisions of the law and was made without due process and made presumptuous statements. In the Respondent’s case, Form O-3 had not yet been filed and issued as provided for in Act 67. Such removal without proper procedure itself would be uncommon and illegal.
The Registrar of Trademarks (Complainant) stated that the facts of the removal of the trademark were reported to the Trade Mark Journal on non-payment of renewal fees and that such removal would not have taken place without due process in accordance with the legal provisions. Plaintiff alleged that the Respondent attempted to take advantage of the unavailability of records regarding Form O-3 with Plaintiff. In addition, the applicant submitted that the outcome of the decision in favour of the Respondent would be the same as opening doors for applications for the renewal of outdated trademarks due to the simple reason for the non-availability of records with the applicant.
The first judge to hear the case ruled in favour of the defendant. One judge found that the plaintiff’s contention that the legal process would be followed at the time of dismissal was merely an exaggerated statement and that the plaintiff himself admitted that they had not issued a formal Form O-3 notice. Therefore, removing the mark was inconsistent with Section 25 (3) of the Trade and Commerce Act, 1958, read with Regulations 67 and 68 of the Trademark and Sales Act. Therefore, it was held that the Respondent’s application for the refund and renewal of the trademark could not be delayed.
Prior to the Delhi High Court Bench, the complainants also challenged reliance on IPAB’s order that restitution, renewal and removal were separate matters, so any deficiency in removal would not affect renewal. Delhi High court also ruled that the outcome of the decision in favour of the defendant would not prevent them from supporting the purpose of the law.
In addition, the Court ruled that the fact that the Form O-3 notification records were not available was not sufficient reason to assert that the Registrar was not obliged to submit the original notice. 25 (4) of the Act stipulated that a renewal application must be made within one year from the end of the last registration of the reinstatement only if the removal was effected according to Section 3. The procedural activity was not followed according to the Act in the present case.
For these reasons, the Court eventually ruled in favour of the Respondent. They concluded that removing the trademark by the Registrar had not reached a conclusion as prescribed by law. The Court issued an order to the appellant to renew the trademark after being satisfied that the Respondent was the registered owner of the trademark, which expired twenty-six years ago.
CONCLUSION: Restoration of a trademark is an action or process of bringing back the mark to the register of trademarks, which has been far away from it. There are several instances when a mark is far away from the record. These reasons go under rigorous scrutiny before being removed, and getting a second chance for the proprietor is difficult in the majority of the situations. The Trademark Act is very sympathetic to the proprietor’s plight. Therefore, it provides various opportunities to restore the trademark within six months, even after the expiry date of registration, by completing the prescribed form [TM-10] and paying an additional fine. The condition shows how the authenticity of a trademark remains when different companies do not use it after expiration but by the same owner repeatedly to maintain its value in the market.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.