Madras High Court

In All Wps vs The Registrar Of Trade Marks on 13 August, 2024

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

    2024:MHC:3109



                                                                    W.P.Nos.4 of 2024 batch

                             IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                            DATED: 13.08.2024

                                                 CORAM:

                     THE HONOURABLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY

                                   W.P.(IPD) Nos.4 to 14 of 2024 (11 WPs)

                     In all WPs

                     Jaisuryas Retail Ventures Pvt. Ltd.
                     309/3 & 4, Veerappampalayam Pirivu
                     Perundarai Road
                     Erode-638 012
                     rep. By its Director
                     Mr.Rajendra Kamath                           ...Petitioner

                                                    Vs.

                     The Registrar of Trade Marks
                     The office of the Trade Marks Registry
                     Intellectual Property Office Building
                     G.S.T.Road, Guindy, Chennai-600 032         ... Respondent



                     Prayer in W.P.(IPD) No.4 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2355816 in class 35 and renew the same in accordance with due
                     process of law.


                     1/22
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                                                                    W.P.Nos.4 of 2024 batch

                     Prayer in W.P.(IPD) No.5 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2388120 in class 30 and renew the same in accordance with due
                     process of law.
                     Prayer in W.P.(IPD) No.6 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2388121 in class 29 and renew the same in accordance with due
                     process of law.
                     Prayer in W.P.(IPD) No.7 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2388122 in class 43 and renew the same in accordance with due
                     process of law.
                     Prayer in W.P.(IPD) No.8 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2388118 in class 32 and renew the same in accordance with due
                     process of law.



                     2/22
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                                                                    W.P.Nos.4 of 2024 batch

                     Prayer in W.P.(IPD) No.9 of 2024: Writ Petition filed under Article
                     226 of the Constitution of India to issue a Writ of Mandamus
                     directing the Respondents to permit the Petitioner to file renewal
                     application for renewing the trade mark registered under number
                     2355818 in class 32 and renew the same in accordance with due
                     process of law.
                     Prayer in W.P.(IPD) No.10 of 2024: Writ Petition filed under
                     Article 226 of the Constitution of India to issue a Writ of
                     Mandamus directing the Respondents to permit the Petitioner to
                     file renewal application for renewing the trade mark registered
                     under number 2388119 in class 31 and renew the same in
                     accordance with due process of law.
                     Prayer in W.P.(IPD) No.11 of 2024: Writ Petition filed under
                     Article 226 of the Constitution of India to issue a Writ of
                     Mandamus directing the Respondents to permit the Petitioner to
                     file renewal application for renewing the trade mark registered
                     under number 2355819 in class 31 and renew the same in
                     accordance with due process of law.
                     Prayer in W.P.(IPD) No.12 of 2024: Writ Petition filed under
                     Article 226 of the Constitution of India to issue a Writ of
                     Mandamus directing the Respondents to permit the Petitioner to
                     file renewal application for renewing the trade mark registered
                     under number 2388817 in class 43 and renew the same in
                     accordance with due process of law.



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                                                                            W.P.Nos.4 of 2024 batch

                     Prayer in W.P.(IPD) No.13 of 2024: Writ Petition filed under
                     Article 226 of the Constitution of India to issue a Writ of
                     Mandamus directing the Respondents to permit the Petitioner to
                     file renewal application for renewing the trade mark registered
                     under number 2355820 in class 29 and renew the same in
                     accordance with due process of law.


                     Prayer in W.P.(IPD) No.14 of 2024: Writ Petition filed under
                     Article 226 of the Constitution of India to issue a Writ of
                     Mandamus directing the Respondents to permit the Petitioner to
                     file renewal application for renewing the trade mark registered
                     under number 2388117 in class 35 and renew the same in
                     accordance with due process of law.
                                  In all WPs
                                  For Petitioner   : M/s.Arun C. Mohan, Brinda Mohan,
                                                     S.Karthik, K.Venkatesan,
                                                     Keerthikiran Murali, Swabhhi Tyagi,
                                                     Shruthi Srinivasan, Vandana Jain,
                                                     Advaidh M. Nelakanttan


                                  For Respondent : Mrs.R.Durga Rani, CGSC

                                                   COMMON ORDER

In each writ petition, the petitioner seeks a direction to the

respondent to permit the filing of a renewal application in respect

of the registered trade mark forming the subject of the respective

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petition.

2. Mr.N.Shivaji Siddarth is the registered proprietor of each

trade mark dealt with in these writ petitions. By an assignment

deed dated 22.10.2021, he assigned these trade marks to the

petitioner. As on date, details relating to the assignment have not

been entered on the register in terms of the applicable provisions

of the Trade Marks Act, 1999 (the Trade Marks Act) and the rules

framed thereunder. After endeavoring to apply for renewal and

being unsuccessful on account of lack of access to the website, the

present writ petitions were filed.

3. Learned counsel for the petitioner submits that an

obligation is imposed on the Registrar of Trade Marks to issue

notice prior to the expiry of the last registration of the trade mark

to the registered proprietor. He contends that the registered

proprietor did not receive such notice from the Registrar of Trade

Marks. He further submits that the respondent did not take any

steps to remove the relevant trade marks from the register of trade

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marks and, consequently, these trade marks remain on the register

as on date. By relying on the judgment dated 16.02.2024 of a

Division Bench of the Bombay High Court in Motwane Private

Limited v. Registrar of Trade Marks and another, Writ Petition (L)

No.30537 of 2023(Motwane), he contends that the Bombay High

Court concluded that the effect of the lapse on the part of the

Registrar of Trade Marks to issue notice under sub-section (3) of

Section 25 of the Trade Marks Act is that the registered proprietor

would be entitled to make an application for renewal as long as

the mark remains on the register of trade marks. He also relies

upon an order of this Court in M/s. V.A.Mishra & Sons v. The

Registrar of Trade Marks, W.P.(IPD) No.16 of 2024, order dated

01.07.2024, wherein this Court permitted the petitioner therein to

apply for renewal in view of the failure of the Registrar of Trade

Marks to issue notice under sub-section (3) of Section 25.

4. In response to these contentions, learned counsel for the

respondent submits that the petitioner is not the registered

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proprietor of the trade marks and that the petitioner did not file an

application in relation to the assignment. She further submits that

notice under sub-section (3) of Section 25 read with sub-rule (1) of

Rule 58 of the Trade Marks Rules, 2017 (the TM Rules) was issued

to the registered proprietor. In order to substantiate this

contention, she refers to the correspondence register and points

out that the notice was dispatched on 25.03.2022 to Jus Pro Legal

Services, which is the agent of the registered proprietor.

Consequently, she contends that the statutory mandate was

complied with by the respondent. She also submits that Section 25

read with Rule 57 of the TM Rules makes it clear that an

application for renewal may be made only up to one year from the

date of expiration of the last registration of the trade mark, and not

thereafter. In support of these contentions, reliance is placed

upon the judgment of the Delhi High Court in Irvinder Kaur

Chadha Supreme Agencies v. Garnish Electronic Pvt. Ltd. and

another(Irvinder Kaur Chadha), 2024 SCC Online Del 5253.

5. Upon taking note of the rival contentions, by way of

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preamble, it is pertinent to point out that a trade mark may be

renewed for blocks of ten years at a time in perpetuity. Unlike

other forms of intellectual property, such as patents, designs and

even copyrights, which are granted for a specified maximum

length of time; subject to renewal, a trade mark registration may

be renewed without any limitations as to time. The current dispute

should be examined by bearing in mind this overarching

characteristic of this form of intellectual property.

6. Sub-section (1) of Section 25 prescribes the validity period

of ten years for the registration of a trade mark subject to renewal

thereof. Sub-section (2) specifies the procedure for renewal; sub-

section (3) imposes an obligation on the Registrar to issue notice

regarding the date of expiry of registration; and sub-section (4)

enables restoration of a removed trade mark within the time limit

specified therein. Since Section 25 is critical for the determination

of this dispute, it is set out below:

“25. Duration, renewal, removal and restoration of registration

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(1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the date of expiration of the last registration).

(3)At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time

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prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:

Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just to do so, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions and limitations as he thinks fit to impose, for a period of ten years from the

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expiration of the last registration.” (emphasis added)

While sub-section (2) confers on the registered proprietor the right

to apply for renewal of registration in the prescribed manner and

within the prescribed time, sub-section (3) imposes an obligation

on the Registrar to send notice to the registered proprietor in the

prescribed manner and at the prescribed time prior to the expiry of

the last registration of the trade mark. If the registered proprietor

fails to apply for renewal in spite of receipt of such notice, sub-

section (3) further enables the Registrar to remove the trade mark

from the register of trade marks. The proviso to sub-section (3)

qualifies the right of removal by prescribing that the Registrar

shall not remove the trade mark from the register if an application

is made within six months from the expiry of the last registration

seeking renewal subject to payment of fees and surcharge. Sub-

section (4) is also relevant and enables the registered proprietor to

seek restoration of the trade mark within one year from the

expiration of the last registration.

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7. These provisions should be read with Rules 57 to 61 of the

TM Rules, which, in relevant part, are set out below:

                                       “57.    Renewal      of     registration-(1)   An
                                       application    for    the     renewal     of   the

registration of a Trade Mark shall be made in Form TM-R along with the fee prescribed in the First Schedule and may be made at any time not more than one year before the expiration of the last registration of the Trade Mark.

(2) A request for renewal of registration of the Trade Mark filed within prescribed time shall be allowed unless the Trade Mark has been removed or cancelled or is otherwise not renewable under any of the provisions of the Act and rules or by any order of the competent Court or the Registrar.

58. Notice before removal of Trade Mark from register -(1) In case no application for renewal of the registration in the prescribed form together with the specified fee has been received, the Registrar shall send, not more

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than six months before the expiration of registration of the Trade Mark, a notice in Form RG-3 at the address of service informing the registered proprietor of the approaching date of expiration and the conditions, if any, subject to which the renewal of registration may be obtained.

....

59. Advertisement of removal of Trade Mark from the register- If at the expiration of registration of a Trade Mark, the renewal fees has not been paid, the Registrar may remove the Trade Mark from the register and advertise the same forthwith in the Journal:

Provided that the Registrar shall not remove the Trade Mark from the register if an application for payment of surcharge is made under proviso to sub-section (3) of section 25 in Form TM-R within six months from the expiration of the registration of the Trade Mark.

60. Restoration and renewal of registration – An application for the restoration of a Trade Mark to the register and renewal of its

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registration under sub-section (4) of section 25, shall be made in Form TM-R within one year from the expiration of the registration of the Trade Mark accompanied by the prescribed fee. The registrar shall, while considering the request for such restoration and renewal have regard to the interest of other affected persons.

61. Notice and advertisement of renewal and registration – Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.” (emphasis added)

8. Sub-section (2) of section 25 of the Trade Marks Act

prescribes that the Registrar shall renew the registration of a trade

mark for a further period of ten years if an application is received

from the registered proprietor in the prescribed form and within

the prescribed time. Rule 57 stipulates that the application for

renewal shall be made in Form TM-R (prescribed form).

Curiously, as regards prescribed time, Rule 57 enables the filing of

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such application “at any time not more than one year before the

expiration of the last registration of the Trade Mark”. In effect, the

earliest date for filing such application is prescribed, but not the

last date. By way of illustration, if a registration had been granted

for a ten year period running from 01.01.2014 to 31.12.2023, the

application for renewal may be filed at any time after 31.12.2022.

Sub-section (3) of section 25 mandates that a notice be issued by

the Registrar at the prescribed time before the expiration of the last

registration to the registered proprietor so as to put such person on

notice regarding the approaching date of expiry of registration.

Rule 58 requires that this notice be sent in Form RG-3 “not more

than six months before the expiration of registration of the Trade

Mark”. Reverting to the earlier illustration, this notice may be

given only after 30.06.2023 if the last registration was expiring on

31.12.2023.

9. Subject to issuing notice in Form RG-3, the Registrar is

empowered to remove the trade mark from the register in

accordance with sub-section (3) of section 25 read with the proviso

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to Rule 59. Effectively, even after issuing notice, the Registrar

cannot remove the trade mark from the register until at least six

months have lapsed after the expiry of the last registration because

the proviso to sub-section (3) precludes removal if an application

is made with the prescribed fee and surcharge within the above-

mentioned six month period. Upon expiry of this six month

period, the trade mark may be removed subject to such removal

being advertised forthwith by the Registrar as per Rule 59. Even

thereafter, the registered proprietor has a further window of six

months to seek restoration as per sub-section (4) of section 25 read

with Rule 60.

10. From the above discussion, the conclusions that follow

are that there is a statutory obligation on the Registrar of Trade

Marks to issue notice under sub-section (3) of Section 25 read with

sub-rule (1) of Rule 58 in case an application for renewal is not

received in terms of sub-section (2) of Section 25 read with sub-

rule (1) of Rule 57. Given the right of a registered proprietor to

renew the registration for blocks of 10 years at a time, the obvious

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object and purpose of the notice is to inform the registered

proprietor that the time limit for expiry of the registration is

approaching and to take necessary action to renew the registration,

if so intended. Indeed, even after removal, sub-section (3) of

Section 25 read with Rule 59 prescribes that the removal should be

advertised in the Trade Mark Journal. Once again, the object and

purpose is to put the registered proprietor and the public on notice

about the removal of the trade mark so as to enable such

registered proprietor to take action for restoration in terms of sub-

section (4) of Section 25 read with Rule 60, as also to enable any

person interested in or affected by the trade mark to take

consequential action.

11. In this case, as adverted to earlier, the trade marks have

not been removed from the Register of Trade Marks. While the

respondent asserts that notice in Form RG-3 was sent to the

registered proprietor under dispatch No.5567145, the respondent

is unable to place on record acknowledgment of receipt of such

notice. Without such acknowledgment, it cannot be concluded

that the registered proprietor of the trade marks/assignor of the

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petitioner received such notice. The consequences of the above,

including non-removal, warrant consideration next.

12. As stated at the outset of this discussion, a trade mark is

a form of intellectual property which may be registered and

renewed in perpetuity for blocks of ten years at a time. The earliest

date for seeking renewal is prescribed in sub-rule (1) of Rule 57,

but not the end date. Such end date is only prescribed for

restoration in sub-section (4) of section 25 read with Rule 60. The

sequitur is that an application for renewal may be made at any

time after the start date prescribed in Rule 57(1) if the trade mark

has not been removed from the register. The rationale for

prescribing an end date for restoration is that the removal of a

trade mark is advertised and third party rights, including by way

of conflicting registrations, may be created thereafter. Up to the

prescribed end date for restoration, the creation of adverse or

conflicting third party rights is mitigated by the legal fiction in

section 26 that the removed trade mark will be deemed to be on

the register for one year after removal unless it falls within the

exceptions specified therein.

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13. Hence, the failure of the respondent to put the registered

proprietor on notice with regard to the impending expiry of

registration and remove the trade marks from the register

thereafter opens the door for such registered proprietor or his

successor-in-interest to seek renewal. In this connection, the order

of the Delhi High Court in Irvinder Kaur Chadha is distinguishable

inasmuch as notice under sub-section (3) of section 25 was duly

served in that case on the registered proprietor. For reasons set out

above, I concur with the conclusion of the Division Bench of the

Bombay High Court in Motwane.

14. The petitioner is, however, not the registered proprietor

of these trade marks as on date. Instead, the petitioner asserts

rights under a deed of assignment. Therefore, it is necessary for

the petitioner to first apply for registration of such assignment in

accordance with the relevant provisions. Once the assignment is

registered, it will be open to the petitioner to apply for renewal of

these trade marks.

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15. For reasons set out above, these writ petitions are

disposed of on the following terms:

(i) the petitioner is permitted to apply for registration of

assignment in accordance with the Trade Marks Act, 1999. Upon

receipt of such application, the same shall be considered

expeditiously.

(ii) Within one month from the date of registration of the

assignment, the petitioner is permitted to apply for renewal of

registration of these trade marks. Until such time, the respondent

shall not take any steps for the removal of these trade marks.

(iii) In order to enable the petitioner to apply for registration

of the assignment and for renewal of these trade marks, the

respondent is directed to provide access to the portal or, in the

alternative, permit the petitioner to file necessary documents in the

physical form.