Trademark renewal is often treated as a routine administrative exercise. However, the effects of non-renewal can be commercially severe, particularly when a long-standing registered mark faces the risk of removal from the register due to procedural lapse. Section 25 of the Trade Marks Act, 1999, recognises this and accordingly places a mandatory obligation on the Registrar of Trade Marks to issue renewal notices to registered proprietors before removal of a trademark from the register.
In recent years, Indian courts have been tasked with reviewing the manner in which renewal notices are issued by the Trade Marks Registry, particularly in cases where trademarks are removed despite obvious defects in the service of statutory notices. The Delhi High Court’s decision in Rajinder Singh vs Registrar of Trade Marks [W.P.(C)-IPD 4/2026] is another significant ruling in this area of debate.
Factual Matrix
The petitioner claimed adoption and use of the trademark “B.P.R.” since April 1, 1979, in relation to electric motors, grinders, pump sets and allied goods falling in Class 7. A trademark application was filed on August 11, 1999, for registration of the mark “B.P.R.” as a word mark. The application was initially objected to by the Registrar of Trade Marks, following which the petitioner’s trademark agent filed a reply to the examination report in 2002. The application was accepted and published in the Trade Marks Journal in 2003.
After this, opposition proceedings were initiated by a third party, during the pendency of which, the petitioner’s trademark agent filed a fresh POA in Form-48, disclosing a new address for communication. The subsequent hearing notices issued by the Trade Marks Registry between 2015 and 2017 were consistently sent to this updated address. The opposition was dismissed due to the non-appearance of the opponent, and the petitioner’s mark was ordered to be registered. A registration certificate was issued in 2018. The petitioner then filed a renewal application, after which the trademark was renewed for 10 years from August 11, 2009. Notably, the communication confirming renewal was also sent by the Registry to the updated address of the petitioner’s agent.
The dispute arose when the petitioner later discovered that a notice regarding expiry and renewal had allegedly been issued by the Registry in May 2019 to the old address of the petitioner’s former trademark agent. The online records further revealed that the notice had been returned with the remark “no such firm”. The petitioner contended that neither he nor his authorised agent had received the statutory renewal notice under Section 25(3) of the Trade Marks Act. When the petitioner’s newly appointed agent attempted to file a fresh renewal application in 2025, the online system did not permit the filing, requiring the petitioner to approach the Delhi High Court through a writ petition.
Issues Before the Court
The primary issue before the Court was whether the Trade Marks Registry could deny renewal on the ground that the petitioner had failed to formally update the address for service through the prescribed statutory form, despite the Registry itself repeatedly communicating with the petitioner’s authorised agent at the updated address during the course of the trademark proceedings.
The respondent Registry argued that the petitioner had failed to comply with the statutory procedure for change of address for service under the Trade Marks Rules. According to the Registry, the POA under Form-48 merely authorised an agent and could not substitute the prescribed form required for formally changing the address for service in the Registry’s records. The respondent further contended that the notices were system-generated and automatically dispatched to the address recorded in the Registry database. Since the petitioner had not filed the prescribed form for updating the address for service, the notices continued to be sent to the original address recorded at the time of filing the trademark application.
On the other hand, the petitioner argued that the Registry had consistently recognised and acted upon the updated address during the opposition proceedings and even while issuing the registration certificate and renewal confirmation. Therefore, the Registry could not rely upon technical procedural objections to justify service of the renewal notice at an address which was admittedly no longer functional.
Court’s Analysis
The Delhi High Court closely examined the conduct of the Trade Marks Registry during the course of the trademark proceedings. The Court noted that although the Registry argued that the petitioner had not formally complied with the prescribed procedure for a change of address, the factual record revealed that multiple hearing notices had, in fact, been issued to the updated address of the petitioner’s agent over several years. The Court considered it significant that not only hearing notices, but even the registration certificate and subsequent renewal communication had been sent by the Registry to the updated address. In these circumstances, the Court found it unfathomable that the Registry would revert to the old address while issuing the crucial renewal notice.
Rejecting the Registry’s technical objections, the Court held that once the Trade Marks Registry had, through its own conduct, acknowledged and acted upon the updated address of the petitioner’s authorised agent, it could not later contend that the petitioner had failed to comply with the prescribed rules for change of address. The Court also examined the mandatory nature of Section 25(3) of the Trade Marks Act. In doing so, it relied upon its earlier decision in Coldsmiths Retail Services Private Limited vs Registrar of Trade Marks, where the Court had emphasised that the obligation to issue renewal notices is mandatory and carries serious commercial consequences.
The Court restated that removal of a trademark due to defective service of renewal notices could expose a mark to adoption by third parties and lead to avoidable litigation. The Court rejected the respondent’s contention that the petitioner should independently have ensured timely renewal regardless of receipt of notice. The Court reaffirmed that Section 25(3) places the statutory obligation upon the Registrar and not upon the proprietor.
Another significant aspect of the ruling was regarding delays and laches. The respondent relied upon the substantial delay of approximately 6.5 years in approaching the Court. However, the Court referred to earlier precedents where even longer delays had been condoned in cases involving defective service of renewal notices. The Court ultimately held that the present petition was not barred by delay and laches, given the peculiar facts of the case.
Decision of the Court
The Delhi High Court allowed the writ petition and permitted the petitioner to file a fresh form for renewal of the trademark, after payment of the prescribed fee and the applicable fine, within 15 days. The Court directed the Trade Marks Registry to accept and process the renewal application in accordance with the law within 8 weeks.
Conclusion
The judgment emphasises that the issuance of renewal notices under Section 25(3) of the Trade Marks Act is not a mere formality, but a functional statutory protection to protect registered trademark holders from unintended lapse of trademark rights. The Court recognised that clerical consistency and procedural fairness are essential components of trademark administration.
As trademark portfolios often involve changes in agents, addresses, and ownership structures over extended periods, this judgment recognises the realities of trademark prosecution practice and highlights that procedural compliance in trademark management is not merely about forms and technicalities but about protecting the continuity, certainty and commercial value of registered IP rights.
Authors – Manisha Singh (Partner) and Shivi Gupta (Associate Partner)