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Judgment
Prabha Sridevan, J
1 . The application for condonation of delay is before us. The delay in filing is forty days. According to the appellant the reason for the delay is the
lapse of time in getting instructions from the party who is in the U.S. The reason for the delay is accepted and the delay is condoned. We have heard
Mr. S.K. Bansal, learned counsel on the merits of the appeal. Therefore, the Registry is directed to number the appeal and we shall pronounce the
orders on the appeal right now.
2 . The trade mark NEXXUS word per se and NEXXUS Device were registered in th names of Nexxus Products Company Inc. from 13.12.1985 in
classes 3 and 5. There are four appeals here and this is the common order passed in all the four. All the four registrations were renewed upto
13.12.1992 and again upto 12.12.1999. No renewal was filed thereafter and the marks lapsed. There was an assignment in favour of the appellant
herein by the original owner of the trade marks which is dated 11.08.2005. According to the learned counsel a joint request was made on 12.09.2005
for restoration of the trade mark and also a request to register the appellant herein as a subsequent proprietor and also the alternate address of service
on TM-50. They were informed on 16.11.2006 that the trade mark Nos. 446836, 446837, 446838 were not renewed and no details were available
regarding the mark No. 446839. On 06.11.2006, the appellant filed a request for renewal/restoration from 13.12.1999 to
13.12.2006 and from 13.12.2006 to 13.01.2016 in the prescribed form. Since the renewal period had lapsed the request was not allowed. Therefore,
the appellant filed petition W.P.(C) No. 448/2009 before the Hon'ble Delhi High Court and order was passed in their favour on 23.01.2009 and the
relevant para is as follows:
Having regard to the limited controversy where the petitioner's grievance is inaction of the Registrar, the Court is of the opinion that at this stage, the
only direction which can be appropriately given to the respondent Nos. 2 and 3 is to consider the petitioner's application for whatever relief is claimed,
in accordance with law and issue an order as expeditiously as possible and preferably within 12 weeks from today. It is open to the respondents to
grant such hearing as may be necessary in the circumstances, if so warrant.
3 . Thereafter the matter went back to the respondent herein who passed the order that is challenged in this appeal. The learned counsel submitted
that the trade marks which had been renewed periodically had lapsed on 13.12.1999 and even as per the impugned order the O-3 notice was issued
only on 13.12.1999 whereas Rule 64 of the Trade Marks Rules requires the Registrar to issue notice on a date ""not less than one month and nor more
than three months before the expiration of the last registration of the trade mark"". The learned counsel submitted that when even as per the impugned
order Rule 64 was not complied with then the order rejecting the application for restoration was not correct. The respondent ought not to have done so
on the ground that the appellants had not availed of the one full year during which they could have applied for restoration. This is because non-
compliance of Rule 64 vitiates the order.
The learned counsel relied on a recent judgement of the Hon'ble Delhi High Court in W.P.(C) 10189/2009 Allied Nippon Limited vs. Union of India
and others where the facts were almost identical. The learned counsel submitted that according to 1996 PTC (16) Polson Ltd., vs. Polson Dairy Ltd.,
it was held that renewal with retrospective effect was valid since there is no provision in the Act restricting retrospective renewal. The learned
counsel also relied on 2007 (35) PTC 875 (Karn.) Tetragon Chemie (P) Ltd., vs. Government of India & Anr., where the order of removal was
quashed since there was no prior notice under section 25 read with rule 69 before an order of renewal and lastly, on 1983 PTC 55 A. Abdul Karim
Sahib and Sons etc., vs. The Assistant Registrar of Trade Marks, Madras where the Division Bench of the Hon'ble Madras High Court held that ""As
the appellants are proprietors of the trade mark and even when the fact of non-payment of the fees and removal of the trade mark was advertised
after restoration is just it is bound to be made even if there is an inordinate delay."" The Division Bench held that only if a third party would be
prejudiced by restoration it would be ""a proper ground for denial of restoration.
5 . We have considered the submissions of learned counsel Shri S.K. Bansal. In the present case, it is an admitted fact that the marks lapsed on
13.12.1999. It is also apparent from the order that the O-3 notice was issued on 13.12.1999 to the erstwhile attorney of the appellant. Section 25(3) of
the Trade Marks Act, 1999 requires the Registrar to send notice in the prescribed manner ""before the expiration of the last registration of a trade
mark"". This is a mandatory requirement and the Registrar is obliged to comply with this. Decisions of the Hon'ble High Court are also to the same
effect as seen from 1996 PTC 16 (supra). In W.P.(C) No. 10189/2009 (supra), the mark lapsed on 09.04.2004. Though the respondents claimed that
notice in Form O-3 was issued on 05.04.2004, there was nothing on record to show that it was in fact done and therefore, the Hon'ble Delhi High
Court gave the benefit of doubt to the petitioner. The restoration application was filed beyond the statutory period of one year as in the present case. It
was held in Para 11 ""...With the Respondents unable to show that they had complied with Section 25 (3) of the TM Act, 1999, the Petitioner's
application for renewal of its registration could not have been rejected on the ground of delay"". Thereafter, direction was given to the Registrar of
Trade Mark to consider the petitioner's application.
6 . In the present case, we issue the same direction to the Registrar. Unless the Registrar finds that a third party will be prejudiced by the restoration
the Registrar would be bound to restore the trade mark as per the decision of the Division Bench of the Hon'ble Madras High Court in 1983 PTC 55
(supra). The appeals are, therefore, allowed. The restoration petition shall be considered and orders passed restoring the marks unless the Registrar
finds that a third party will be prejudiced. The fact that the application was made after delay cannot be a reason for rejecting the application. No order
as to cost.