Madras High Court
P.Pandian vs The Registrar Of Trade Marks on 13 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
W.P.(IPD) No.36 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 13.02.2025
CORAM :
THE HON'BLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P.(IPD) No.36 of 2024
P.Pandian .. 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: Petition filed under Article 226 of the Constitution of India
seeking a writ of Mandamus directing the respondent to permit the
petitioner to file renewal application for renewing the Trade Mark
WAHEED registered under number 573302 in Class 24 and renew the
same in accordance with due process of law.
For Petitioner : Ms.Shruthi Srinivasan
For Mr.Arun C.Mohan
For Respondent : Mr.S.Janarthanam
Senior Panel Counsel
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W.P.(IPD) No.36 of 2024
ORDER
Petitioner seeks a direction to respondent to permit petitioner to
file a renewal application for renewing the trademark WAHEED, which
was registered under TM No.573302 in Class 24.
2. Petitioner applied for registration of the above mentioned
trademark on 15.05.1992. After examination report was issued and
hearing was conducted on 25.03.2004, petitioner was awaiting
advertisement before acceptance. By communication dated
18.11.2019, petitioner asserted that publication in the trademark
journal had not been effected and requested respondent to make such
publication. After the advertisement was published on 03.02.2020, the
registration certificate was issued on 12.09.2020. Meanwhile,
petitioner noticed, on routine check, that the trademark registry
reflected the status of the trademark as having expired on 15.05.2002.
Since the online portal was inaccessible to petitioner for filing a
renewal application, the present writ petition was filed.
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3. Learned counsel for petitioner submits that petitioner did not
receive notice under Sub-rule (1) of Rule 58 of the Trade Marks Rules,
2017 informing petitioner of the approaching date of expiry of the
trademark registration. After pointing out that the trademark has not
been removed from the register as on date, learned counsel contends
that petitioner is entitled to apply for renewal at this juncture. In
support of these contentions, learned counsel relies upon several
precedents, including the judgment of the Division Bench of the
Bombay High Court in Motwane Private Ltd. v. Registrar of Trade Marks and
others [Dated 16.02.2024 in W.P.(L) No.30537 of 2023] . She also relies upon
the judgment of this Court in Jaisuryas Retail Ventures Pvt. Ltd. v. The
Registrar of Trade Marks [Order dated 13.08.2024 in W.P.(IPD) Nos.4 to 14 of
2024] .
4. In response to these submissions, Mr.Janarthanam submits
that the registration certificate was issued on 12.09.2020.
Consequently, he submits that the renewal fee should have been paid
within six months from the date of actual registration as per Sub-rule
(3) of Rule 58 of the Trade Marks Rules. In view of default in doing so,
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he submits that petitioner is not entitled to seek renewal at this
juncture. On instructions, he, however, confirms that the database of
the trademark register does not reflect any notice being issued to
petitioner with regard to non-renewal and impending expiry.
5. In Jaisuryas Retail Ventures, after citing Motwane with approval,
I held as follows in paragraphs 8 and 13 of the said judgment:
“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 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
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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.
...
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.”
6. The facts and circumstances of this case are substantially
similar to those prevailing in Jaisuryas Retail Ventures. Therefore,
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petitioner is entitled to apply for renewal. Respondent is directed to
provide access to portal for such purpose or, in the alternative, permit
petitioner to file necessary application and documents in physical form.
7. The writ petition is allowed on the above terms. There shall be
no order as to costs.
13.02.2025
kpl
To
The Registrar of Trade Marks
The Office of the Trade Marks Registry
Intellectual Property Office Building
G.S.T. Road, Guindy
Chennai 600 032.
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SENTHILKUMAR RAMAMOORTHY,J.
(kpl)
13.02.2025
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