In light of the recent DHC Rajesh Kumar Mittal v. Registrar of TM judgement, directing the Trademark Registry to renew a lapsed trademark, Akshay Ajayakumar writes on why courts should have cautious approach towards such restorations. He explains inter alia such restorations congest the trademark register, results in legal ambiguity, and imposes undue burden on the Registry. Akshay is a graduate of National Law University, Jodhpur, and has an LL.M in IP and Competition Law from the Munich Intellectual Property Law Center (MIPLC). He is currently a consultant at Sim and San, Attorneys At Law. His previous posts can be accessed here. Views expressed here are those of the author’s alone.
Trademark Renewal Notices: A Lifeline or a Potential Loophole for Expired Trademarks?
By Akshay Ajayakumar
In Rakesh Kumar Mittal v. The Registrar of Trade Marks (Delhi High Court, 2025) (“Rakesh Kumar Mittal”), the petitioner applied (No. 627446) on 06.05.1994 for the trademark “MILTON”. The Registration Certificate was issued on 30.05.2003 and was valid until 06.05.2004. However, the registration lapsed due to non-renewal and was subsequently removed from the Register. An RTI application by the petitioner later revealed that the Form O-3 notice, which the Registrar issues to inform the proprietor about the approaching expiry date of the registration, was not served. The petitioner alleged that the non-receipt of Form O-3 led to the failure to renew the trademark and its subsequent removal.
The Court held that the mere expiry of a trademark registration does not, by itself, justify removal from the Register. Such removal must be preceded by strict compliance with the mandatory requirement of issuing a Form O-3 notice under Section 25(3) of the Trade Marks Act, 1999 (the “TM Act”) and Rule 64(1) of the earlier Trade Marks Rules. In this case, the Registrar failed to issue the notice before removal, rendering the removal procedurally flawed and ex facie illegal. The Court accordingly directed the restoration and reinstatement of the registration. However, restoring long-removed trademarks presents new challenges, which will be discussed after a brief overview of the relevant laws in India and internationally regarding renewal notices.
The Mandatory Requirement to Issue Notice Under Section 25(3) of the TM Act
Section 25(3) of the TM Act mandates that the Registrar must send a notice in Form O-3 (now Form RG-3) to the registered proprietor six months before the expiration of the registration, informing them of the expiration date and the conditions for renewal. Under the earlier Trade Mark Rules, Rule 64 required the Registrar to notify the registered proprietor in writing using Form O-3. This notification must be sent between one and three months before the registration expiration. Under the new Rule 60(2), the Registrar must send Form RG-3 no more than six months before expiration, notifying of the expiration date. Therefore, the issuance of notice under Section 25(3) read with Rule 64(1) of the Trade Marks Rules, 2017 (the “Rules”) is a mandatory precondition before removing a trademark from the Register. This has been reiterated by the Division Bench of the Delhi High Court in Union of India v. Malhotra Book Depot (2013), where it was held: “…Section 25(3) cannot be interpreted as permitting removal without the condition of sending the notice being complied with,” along with numerous other judgments.
A Brief Look at EU and US Legislation on Renewal Notifications
Under EU law, Article 49(2) of Directive 2015/2436 and Article 53(2) of Regulation (EU) 2017/1001 require the trademark office to notify the proprietor and registered rights holders of the approaching expiration at least six months in advance. However, failure to provide such notification does not result in liability for the office. The restitutio in integrum (Latin for “restoration to the original condition”) doctrine, under Article 104 of Regulation 2017/1001, allows trademark proprietors to apply for restoration if a deadline is missed despite exercising due care, with a one-year restoration period starting from the end of the protection period, not after the six-month grace period.
In Case T-326/11, Brainlab AG v. OHIM (2012), Brainlab AG’s trademark was removed for non-renewal after the EUIPO failed to notify due to an internal error. The Court granted restoration as the company had exercised due care, emphasising that procedural errors by the office, when coupled with due diligence by the proprietor, can justify reinstatement. While the Court reiterated that Article 53(2) exempts the Office from liability for failing to notify, it considered the Office’s error to be an “exceptional circumstance.”
In contrast, in the US, the Lanham Act (15 U.S.C. § 1059) requires registrants to file renewal applications between the 9th and 10th year, along with a declaration of continued use (Section 8), with a six-month grace period. However, the United States Patent and Trademark Office (the “USPTO”) is not required to notify trademark owners of renewal deadlines, and any reminder is a courtesy. If the deadline is missed, the registration is cancelled. Furthermore, according to Trademark Manual of Examining Procedure (TMEP) §§ 1604.02 and 1606.02, any reminder is a courtesy, and the registrant bears full responsibility for monitoring deadlines.
Problems with the Restoration of Long-Removed Trademarks
The author believes that restoration requests filed after an unreasonable delay, without due diligence by the proprietor, should not be allowed due to several challenges:
- Register Congestion: India is fast becoming one of the busiest trademark registries globally. As of April 30, 2025, the Indian Trademark Registry had received 197,110 applications, nearly matching the USPTO’s 200,107(see here, here). Given the limited availability of competitively effective trademarks (see Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion– Harvard Law Review), the removal of non-renewed marks would ease congestion and allow new applicants to register similar or identical marks.
- Legal Ambiguity: When a mark can be restored past its expiration due to procedural lapses, it creates uncertainty. Third parties are deterred from applying for similar marks due to the presence of a non-renewed trademark, but possibly restorable trademarks. Because older applications often lack digitised records of O-3 or RG-3 notices, the only way to verify whether a notice was issued is through RTI applications. Moreover, even O-3/RG-3 records might not be available with the Registry, as was the case in Cipla Ltd. v. Registrar of Trade Marks and Another (Bombay High Court, 2013 (“Cipla”), or there could be defective RG-3 notices, as in Promoshirt Sm. Pvt. Ltd. V. The Registrar Of Trade Marks(Delhi High Court, 2024) (“Promoshirt”). As priority is essential in trademarks, the addition of a procedural step of filing an RTI introduces additional delays and complexity to trademark applications.
- Burden on Examiners and Process Efficiency: Clearing the register of deadwood can reduce relative objections and simplify examination. Given the delays in examination timelines and the increasing volume of applications, streamlining the process can bring significant benefits.
The current law mandates compliance with Section 25(3) notice requirements, but it may be worth considering a time cap on the restoration of removed marks, similar to EU law. However, this would require amending Section 25(3) of the TM Act. Additionally, EU law requires trademark proprietors to exercise due diligence. Public notices alone do not satisfy Section 25(3), as an individual notice is required (see the above case, Cipla). One alternative could be for the Registry to identify removed marks without O-3/RG-3 notices and re-send them, though the current legal framework does not provide for retrospective compliance. In the Charanjiv Kumar Taneja Trading as Chirag Enterprises v. The Registrar of Trade Marks (Delhi High Court, 2023), it was observed that the Registry cannot be expected to retain records from 16 years ago, and prolonged inaction prevents restoration. However, this contradicts cases like Rakesh Kumar Mittal, where restoration was granted after nearly two decades.
The only practical remedy without needing an amendment to the law lies in Rule 60 of the Rules read with Section 25(4) of the TM Act, which allows the Registrar to consider third-party interests in restoration cases. For instance, Courts have as early as A. Abdul Karim Sahib and Sons and Ors. v. Assistant Registrar of Trade Marks (Madras High Court, 1973), which was relied upon in the landmark Union Of India & Ors. v. Malhotra Book Depot (Delhi High Court, 2013), directed the Registrar to consider third-party applications filed during the interregnum (see also Malhotra Book Depot v. Union Of India & Ors.) or acknowledged third-party rights (see Cipla, Gopal Ji Gupta v. Union of India & Anr. (Delhi High Court 2019)) before allowing restoration of an expired trademark where an O-3/RG-3 notice had not been issued.
However, in a recent line of judgments regarding restoration related to O-3/RG-3 notices, the Court has resorted to directing the Registrar to restore marks without any direction to ensure that third-party rights have not arisen in the interregnum (see Kleenage Products (India) Private Limited v. The Registrar of Trade Marks and Ors. (Bombay High Court, 2018), Promoshirt (Delhi High Court, 2024), Ashok Bhutani v. The Registrar Of Trade Marks & Anr. (Delhi High Court, 2024), and M/s Zine Davidoff S.A v. Union Of India And Anr. (Delhi High Court, 2022).
This can create a problem where third-party rights could be affected due to the restoration of marks that were not renewed for a long time. For instance, some restoration requests have been for marks that have not been renewed for decades (as in Rakesh Kumar Mittal). It is very much feasible that in such an intervening time, a new entity could have successfully registered an identical trademark. Therefore, even when marks are restored due to procedural lapses, the Registrar must remain vigilant and protect rights that may have arisen in the interregnum. The remedy would be for the Registrar to be cautious in restoring marks when intervening rights have arisen, and it would also be the ideal time for the Court to return to ensuring that third-party rights are not affected when a mark is restored due to the non-issuance of O-3/RG-3 notices.
