Delhi High Court Sets Aside IPAB Order Removing Swiss Luxury Brand 'Davidoff' From Trademark Register

Justice Amit Bansal noted that the Trade Marks Registry had admitted to not having any records indicating that form O3 notice was issued to the petitioner prior to the removal of the mark.

The notice is mandatory as per Section 25 of the Trade Marks Act, 1958 and Rule 64 of the Trade Marks Rules, 1959. It is a reminder sent to the registered proprietor of a trademark before the validity of his trademark expires.

The bench thus observed that “the proprietor of a registered mark must not be penalized for the lapse of the Registry in failing to follow the procedure prescribed under the Act and the allied Rules.”

The dispute between M/s Zine Davidoff SA and the Respondent centred around the use of the mark 'DAVIDOFF'.

IPAB had removed the company's trademark on the ground that the mark had lapsed but it was wrongly renewed long after the statutory deadline for seeking renewal had expired.

Counsel for the company argued that application for registration of the aforesaid mark was filed on 30th May, 1986 and would have been valid till 30th May, 1993. However, the registration certificate for the said mark was only issued on 31st December, 1997.

Upon receiving the said certificate, the Petitioner claimed it applied for renewal of the mark on 29th June, 1998 for a period of seven years from 30th May, 1993 to 30th May, 2000 which was within the statutory period of six months.

Thereafter, the petitioner further filed another application for renewal of the mark on 16th April, 2001 for a period of seven years from 30th May, 2000 to 30th May, 2007. Thus, the petitioner claimed it had sought renewal of the mark in a timely manner and its mark had not expired at any point of time.

It also claimed that the mandatory Form O3 notice was not issued to it prior to the removal of the mark.

The Central government counsel was then asked to examine the records of the Trademark Registry. It was thereafter revealed that no such record was available with the Registry, indicating that the notice was never issued.

It is in this backdrop that the High Court observed, “It is settled position of law that issuance of O-3 notice is a mandatory requirement which must be complied by the Trademark Registry.”

It stated that since the Trade Marks Registry has admitted that it does not have any records to show that a form O3 notice was issued to the petitioner, the Court ordered, “Accordingly, the present petition is disposed of...The petitioner's mark 'DAVIDOFF' is restored to its original number in the Register.”

Appearance: Mr. Ranjan Narula, Mr. Shakti Priyan Nair and Mr. Parth Bajaj, Advocates for Petitioner; Mr. L.B. Rai, Mr. Ayush Pandita and Mr. Satvik Rai, Advocates for R-2.

Case title: M/S Zine Davidoff SA v. Union Of India And Anr

Citation: 2025 LiveLaw (Del) 507

Case no.: W.P.(C)-IPD 57/2021

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