Registrar Required to Serve Statutory Renewal Notices Under Section 25(3); Petitioner Allowed To Restore Eight Trademarks

A bench of Hon'ble Mr. Justice Tushar Rao Gedela heard a writ petition under Article 226 challenging the proposed removal from the Register of eight registered trademarks on the ground of non‑renewal and the refusal of the Trade Marks Registry to accept online renewal applications.

The Court allowed the writ petition and directed that the petitioner be permitted to file fresh Form TM‑R for all eight trademarks on deposit of the prescribed fee and any fine within 10 days, and that the Registrar accept and process the renewals in accordance with the Rules within eight weeks. The Court held that the Registrar bore a statutory obligation under Section 25(3) of the Trade Marks Act, 1999 to send renewal notices to the registered proprietor or its authorised agent and could not evade that duty where change of proprietor and agent had been formally recorded. The Court found that notices (RG‑3) were issued to an erstwhile agent who was no longer authorised and that the Registry ought to have satisfied itself about the correctness of its records before issuing notices. The Court, in its reasoning, observed: "The Legislature, while engrafting sub‑section (3) of Section 25 of the Act mandated the Registrar to send a notice in the prescribed manner to the registered proprietor intimating the date of expiration of the registered trademark and stipulating conditions as to payment of fees etc. Having regard to the fact that the mandate of issuance of such notices is placed upon the Registrar, it was incumbent upon the Registrar to satisfy itself not only of the issuance of such notices either to the registered proprietor or its authorized agent, but also be vigilant as to whether any change of authorization has duly been informed under the Statute to the Registry... Thus, the substratum of mandate engrafted in Section 25(3) upon the Registrar cannot be taken to be a mere procedural issue without any consequences. In other words, the provision of Section 25(3) of the Act is sacrosanct."

Background: The petitioner, Coldsmiths Retail Services Pvt. Ltd., claimed proprietary title to eight trademarks originally registered in the name of Nirula’s Corner House Pvt. Ltd. The assignor executed an assignment (03.01.2018), a Power of Attorney (04.01.2018) and filed Form TM‑M and Form TM‑P on 12.01.2018 to notify the Registry of change of proprietor and to appoint Mr. Munesh Kumar Gaur as authorised agent. The Registry recorded the change of proprietor on receipt of the prescribed fee, but the earlier agent’s details continued on its records. When registrations expired on 14.07.2023, the petitioner’s attempts to file online renewals were blocked with the message “application cannot be renewed (delay of more than one year)”. The Registry issued RG‑3 notices under Section 25(3) to the erstwhile agent, and the Registry relied on non‑payment of Rs.900 for processing Form TM‑M as justification for not updating the agent details.

Learned senior counsel for the petitioner submitted that the Registry had actual knowledge of the assignment and the new agent, that Forms TM‑P and TM‑M were filed and acknowledged, and that statutory RG‑3 notices should have been sent to the proprietor or the correctly authorised agent. The Registry, through the Central Government Standing Counsel, contended that the change of agent was not validly processed for want of the prescribed Rs.900 fee and that the petitioner slept over its rights to renew within the statutory period and the six‑month grace.

The High Court analysed the statutory mandate under Section 25(3) and Rule 58(1) of the Trade Marks Rules, 2017, and followed the Division Bench precedent in Charanjiv Kumar Taneja (LPA 461/2023) which had emphasised that "Section 25(3) places the Registrar under an obligation to 'send' a notice" and that removal for non‑renewal was not an inevitable consequence where no valid notice had been issued. The Court rejected the Registry’s contention that the petitioner should be penalised for the Registry’s failure to update records or to inform the proprietor of any defect when Forms TM‑P and TM‑M had been filed and the change of proprietor was recorded. The Court held that the Registrar’s duty to issue notice was substantive and could not be treated as a mere procedural formality. The writ petition was allowed with liberty granted to the petitioner to file TM‑R within 10 days on payment of fees/fine and the Registry was directed to process renewals within eight weeks.

Case Details: Case No.: W.P.(C)-IPD 37/2025, CM 162/2025 & CM 164/2025 Case Title: COLDSMITHS RETAIL SERVICES PRIVATE LIMITED versus REGISTRAR OF TRADE MARKS Appearances: For the Petitioner(s): Mr. Sanjeev Puri, Senior Advocate with Ms. Pragya Puri and Mr. Georgey V. Matthew, Advocates For the Respondent(s): Ms. Nidhi Raman, CGSC with Mr. Om Ram and Ms. Nikita Singh, Advocates