Issuance Of Form O-3 Notice Mandatory: Delhi High Court Orders Restoration Of MILTON Trademark

The Delhi High Court has ordered restoration of the MILTON trademark holding that it is mandatory to issue Form O-3 Notice in terms of Section 25(3) of the Trade Marks Act.

The Court was considering a Writ Petition seeking restoration and reinstatement of the registration of the Petitioner’s trademark MILTON.

The single bench of Justice Saurabh Banerjee observed, ".....the respondent did not issue the mandatory Form O-3 Notice in terms of Section 25(3) of the TM Act read with Rule 64(1) of the TM Rules. 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....."

The Petitioner was represented by Advocate Siddharth Yadav while the Respondent was represented by CGSC Nidhi Raman.

Facts of the Case

The Petitioner, engaged in the business of Amplifiers, Microphones, Horns for Loud Speakers, Loud Speakers and Transformers and Horn Units and Parts filed application for registration of its trademark in 1994 and the Registration Certificate was subsequently issued in 2003 and it was due for renewal in 2004. However, due to non-renewal within the prescribed time, the registration of the trademark lapsed and was consequently removed from the Register, which was notified in 2010.

The Petitioner then filed an RTI Application to ascertain whether the Respondent had served him with a Form O-3 Notice in terms of Section 25(3) of the TM Act and it was discovered that the Notice was never served.

Counsel for the Petitioner primarily submitted that there is a sheer non-compliance of the mandatory provisions of the TM Act as also the Trade Marks Rules, 2005 and thus the registration of the trademark in issue ought to be restored.

Reasoning By Court

The Court at the outset noted that the prescribed time and manner for issuance of Form O-3 Notice are set out in Rule 64(1) of the TM Rules, wherein it is mandated that where no renewal application along with the prescribed fee has been received, the Registrar shall issue a written Form O-3 Notice to the registered proprietor(s) of the trademark, at least one month and not more than three months before the date of expiration of the registration.

It stressed that the issuance of Notice under Section 25(3) of the TM Act read with Rule 64(1) of the TM Rules is a mandatory precondition before removal of a trademark from the Register, as held in a consistent line of judicial precedents

".........mere expiration of a trademark registration by lapse of time and/ or failure of registered proprietor(s) to get it renewed does not ispo facto justify its removal from the Register. Such removal must be preceded by strict compliance with the mandatory requirement of sending of Form O-3 Notice by the Registrar, notifying the registered proprietor(s) of the impending expiration of the registration and conditions for its renewal," the Court observed.

It thus held that 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.

The Petition was accordingly allowed.

Cause Title: Rakesh Kumar Mittal vs. The Registrar of Trade Marks (2025:DHC: 4432)

Appearances:

Petitioner- Advocate Siddharth Yadav, Advocate Ayush Dey, Advocate Nageshwar Kumhar

Respondent- CGSC Nidhi Raman

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