Ensuring Fairness in Trademark Removal?
The realm of intellectual property law is often marked by intricate legal battles that shape the landscape for IP holders. A recent ruling in the case of Motwane Private Limited vs The Registrar Of Trade Marks, heard by the Bombay High Court on 16th February 2024, has garnered significant attention since it dealt with the removal of a registered trademark from the register of trademarks, with the Court asserting that such removal cannot occur without issuing a notice of renewal as mandated under Section 25(3) of the Trade Marks Act, 1999 and sheds light on the crucial role of proper procedure in trademark maintenance.
Motwane Private Limited (“Motwane”) are the registered proprietors of three trademarks “MOTWANE.” As per their claim, these trademarks were originally registered and renewed until February 17, 1983. However, subsequent renewals were inadvertently neglected. Despite this lapse, the trademarks remained listed on the Register of Trade Marks maintained by the Registry.
In August 2023, Motwane discovered the missed renewals during a routine check. They further contended that they never received a notice mandated under Section 25(3) of the Trade Marks Act, 1999, along with Rule 58 of the Trade Marks Rules, 2017, which requires the Registrar to notify the proprietor before removing a trademark for non-renewal.
The Court in this case ruled in favor of Motwane, recognizing the continued use of the trademarks since 1976 and deemed the non-renewal of the same due to the lack of serving a proper notice, as a technical oversight.Section 25(3) of the Trade Marks Act, 1999 explicitly mandates that a notice for renewal must be issued to the trademark holder. Rule 58 of the Trade Marks Rules, 2017, elaborates on the format and delivery of such notices. Failure to adhere to this procedural requirement can render any removal action invalid.
The decision of the Court in this case carries significant implications for trademark law in India. It underscores the importance of procedural rigor and adherence to statutory requirements in matters concerning intellectual property rights in addition to the necessity of maintaining an updated register of trademarks since it serves as a crucial repository of intellectual property rights, and any inaccuracies or omissions can have far-reaching consequences for businesses and stakeholders
Furthermore, the ruling serves as a cautionary tale for trademark authorities and regulatory bodies. It highlights the imperative of diligent administration and meticulous record-keeping to prevent lapses that could undermine the credibility of the trademark registration system. Additionally, it emphasizes the need for the Trademark Office to have a robust system for sending renewal notices. This could involve:
- Utilizing multiple communication channels (registered mail, email) to reach trademark owners.
- Implementing online renewal reminders and alerts.
However, this ruling also exposes an inherent grey area in the system and thereby warrants for a further caution. Consider a scenario where a prospective applicant diligently conducts a search in the records of the Trade Marks Registry before applying for trademark registration. They come across a trademark registration that has lapsed due to non-renewal within the stipulated period and also not restored within the extended period. Assuming that the trademark is beyond restoration, the applicant proceeds with their own registration. Later, they discover that the previously lapsed registration has been restored by the Court due to a technical non-compliance of procedure.
This situation poses significant risks for new applicants. Despite acting in accordance with established procedures, they now find themselves vulnerable to accusations of infringement or passing off due to the restored registration. This not only creates uncertainty for businesses but also undermines the confidence in the trademark registration system.While the Court’s emphasis on procedural adherence is commendable, there is a pressing need to mitigate the risks faced by applicants who have acted in good faith. This could involve implementing clearer guidelines for trademark restoration proceedings or introducing mechanisms to protect the interests of parties who have relied on lapsed registrations, for adopting a trademark.
Hence, persons wanting to adopt a new trademarkare cautioned to adopt a diligent approach to research the marketplace to ensure that their proposed mark is not being already used by others. One of the key takeaways is that mere absence of a trademark in the records of the Trade Marks Registry does not guarantee its availability for adoption. Even if a mark is not registered or has not been renewed or restored, it may still be in continuous use by its prior owner. In India, trademark law recognizes the principle that prior and continuous use of a mark holds precedence over its registration. This means that a mark which is in continuous use, even without formal registration, may still enjoy protection and could potentially prevent others from adopting a similar mark, even if such use is not reflected in official records.
Hence, it is no longer sufficient to rely solely on the records of the Trade Marks Registry to ascertain the availability of a trademark. Instead, persons wanting to adopt a new trademark must delve deeper, conducting comprehensive investigations to gather evidence in order to ascertain any prior and continuous use of their proposed mark by third parties and in case the mark reflected in the records of the Trade Marks Registry has not been renewed or restored, whether there has been a proper notice issued with effect to the same, acknowledging the removal of such a mark. It is also important to understanding the nuances of trademark law, particularly regarding the interplay between registration and prior use rights. In India, as in many jurisdictions, the rights of a prior user supersede those of a registered owner. The registered proprietor on the other hand, should keep conducting due diligence at regular intervals with respect to their trademark portfolio in order to prevent any mishaps and omissions which can have far-reaching consequences to their brands and businesses.