Madras High Court
M/S.Sakthi Oil Mills vs The Registrar Of Trademarks on 25 February, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
W.P.(IPD)No.38 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 25.02.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P.(IPD)No.38 of 2024
M/s.Sakthi Oil Mills
No.5A, Pollachi Road,
P. Vadugapalayam (P.O.),
Palladam-641 664, Tirupur District,
Tamil Nadu. ... Petitioner
-vs-
The Registrar of Trademarks,
Office of the Trademark Registry,
Guindy, Chennai 600 032. .. Respondent
Prayer: Writ Petition (IPD) filed under Article 226 of the Constitution of
India for issuance of Writ of Mandamus directing the respondent to allow
the petitioner to file renewal application for the Trademark “THENALEE”
registered under No.1133971 in Class 29 and renew the same for a further
period of 10 years from 17.09.2022 by paying the appropriate fees.
For Petitioner : Mr.R.Sathish Kumar
For Respondent : Mr.J.Madanagopal Rao, SPC
1/6
https://www.mhc.tn.gov.in/judis
W.P.(IPD)No.38 of 2024
ORDER
The petitioner seeks a direction to the respondent to permit the
petitioner to file a renewal application for the trade mark THENALEE,
which was registered under T.M.No.1133971 in Class 29.
2.The application for registration of the above mentioned trade mark
was filed by the petitioner on 17.09.2002. The Registration Certificate was
issued on 04.09.2006. The mark was renewed in the year 2012 and such
registration was valid up to 17.09.2022. The petitioner endeavoured to
renew the trade mark in October 2024. Since the petitioner was not
permitted to do so on the ground that the application for renewal was
belated, the present writ petition was filed.
3.By referring to the status of the trade mark as on 29.10.2024,
learned counsel for the petitioner submits that the trade mark has not been
removed from the Register of Trademarks. Consequently, he submits that
the petitioner is entitled to renewal as per the judgment of the Division
Bench of this Court in A.Abdul Karim Sahib and Sons etc. v. Assistant
https://www.mhc.tn.gov.in/judis
Registrar of Trade Marks, 1973 SCC OnLine Madras 390 (Abdul Karim
Sahib) and the subsequent judgment of this Court in Jaisuryas Retail
Ventures Pvt Ltd. v. The Registrar of Trade Marks, 2024:MHC:3109;
2024(100)PTC 25 (MAD) (Jaisuryas Retail Ventures).
4.In response, Mr.J.Madanagopal Rao submits that the notice in Form
RG-3/13549385 was issued to the petitioner on 26.05.2022. Therefore, he
submits that the petitioner is not entitled to renewal at this juncture.
5.The admitted position is that the last registration was valid up to
17.09.2022. In spite of non renewal, the respondent has not taken any steps
for the removal of the trade mark in accordance with the Trade Marks Act,
1999 and the Trade Marks Rules framed thereunder. Consequently, as
per the judgment of the Division Bench of this Court in Abdul Karim
Sahib and as per the subsequent judgment in Jaisuryas Retail Ventures, the
petitioner is entitled to seek renewal. At the same time, it should be
recognised that the petitioner was under an obligation to apply for such
renewal within a reasonable time. In order to deter such laxity on the part of
https://www.mhc.tn.gov.in/judis
the petitioner in future to apply for renewal within a reasonable time, it is
necessary to put the petitioner on terms.
6.For reasons aforesaid, the writ petition is allowed subject to the
petitioner paying a sum of Rs.20,000/- (Rupees Twenty thousand only) as
costs to the Adyar Cancer Institute, Chennai, within a period of two
weeks from the date of receipt of a copy of this order. Subject to fulfillment
of the above condition, the respondent is directed to provide access to the
website so as to enable the petitioner to file the renewal application along
with requisite renewal fees. Such application shall be filed within a period
of 30 days from the date of receipt of a copy of this order. In case it is not
technically feasible for the respondent to provide access to the portal, in the
alternative, the respondent shall receive the renewal application in physical
form and process the same.
25.02.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
https://www.mhc.tn.gov.in/judis
To
The Registrar of Trademarks,
Office of the Trademark Registry,
Guindy, Chennai 600 032.
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
kj
25.02.2025
https://www.mhc.tn.gov.in/judis
