In a bid to protect its trademark, Indi Pharma Pvt Ltd approached the High Court of Bombay to restore the status of the application for the trademark VOMISET (Application no. 711095) in Class 05. Indi Pharma filed a writ petition stating that it was not notified by the Trade Marks Registry regarding the renewal as prescribed under Section 25(3) of the Trade Marks Act, 1999. The petition prayed to prohibit the Registrar of Trade Marks from removing VOMISET from the Trade Marks Register and to allow its renewal for a period of 20 years from 26th July 2006.
The Court relied on the interpretation of the provisions of Section 25(3) of the Act as given in the similar case of Motwane Pvt. Ltd vs The Registrar of Trade Marks. In the relied case, the High Court of Bombay allowed Motwane to renew their trademark application several years post-expiration of the time prescribed for renewal. Like the present case, Motwane was not notified by the Trade Mark Registry regarding the renewal of registration.
As per the precedent laid down in the Motwane case, the Registrar was directed to restore the trademark application for VOMISET within three weeks of the issuance of the order. Additionally, the Court instructed Indi Pharma, to apply for renewal along with the prescribed fees, after the application is restored. The order also mandated the Registrar to process the said application within four weeks.
The Court further directed the Registrar to adhere to the principles discussed in the Motwane case and the provisions of Section 25(3) of the Act when an application for renewal of registration has been made beyond the prescribed deadline. Such applications, if made, are required to be decided by the Registrar within four weeks to avoid unwarranted litigation proceedings.
Conclusion
We can draw the following conclusion from the Motwane case and this case:
- If an applicant has not been served the Renewal Notice, as required under Section 25(3), such application can be renewed beyond the deadline. Provided the applicant makes a representation/application before the Registrar of Trade Marks for restoration/renewal of the trademark, and
- The Registrar of Trade Marks shall decide on such representation/application within four weeks of its receipt.
Citation: Indi Pharma Pvt Ltd vs The Registrar of Trade Marks, High Court of Bombay, 27th March 2024 [WRIT PETITION (L.) NO. 32894 OF 2023]
[Previous blog on Motwane case: https://www.bananaip.com/trademark-cases-injunctions-removal-process-high-court-rulings/ ]
Authored by Ms. Swathi Muthukumar, Trademark Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with a Trademark Attorney, please reach us at: [email protected] or 91-80-26860414/24/34.
