Bombay High Court Allows Renewal of Trademarks Despite Delay, Directs Registrar to Accept Renewal Applications. Non-Issuance of Notice Under Section 25(3) of Trade Marks Act, 1999 Prevents Removal of Marks from Register.

Writ petition under Article 226 of the Constitution of India seeking a writ of prohibition and direction to the Registrar of Trade Marks to accept renewal applications for three trade marks.

The petitioner sought a writ of prohibition restraining the Registrar from removing the trade marks from the register and a direction to accept the renewal applications.

The petitioner's trade marks were not renewed since 1983, but continued to appear on the register. When the petitioner attempted to renew online, the system rejected the application due to delay of more than one year. The petitioner also discovered that no notice under Section 25(3) of the Trade Marks Act was issued.

Whether the Registrar of Trade Marks can refuse to accept renewal applications for trade marks that were not renewed for a long period, when no notice under Section 25(3) of the Trade Marks Act, 1999 was issued and the marks continued to appear on the register.

The petitioner argued that since no notice under Section 25(3) was issued and the marks remained on the register, the Registrar cannot refuse renewal solely on the ground of delay. The respondents did not oppose the petition and submitted that the matter may be disposed of in accordance with law.

The Registrar of Trade Marks cannot refuse to accept renewal applications for trade marks solely on the ground of delay when no notice under Section 25(3) of the Trade Marks Act, 1999 has been issued to the proprietor and the marks continue to appear on the register. The continued presence of the marks on the register indicates that they have not been removed, and the proprietor retains the right to seek renewal.

This petition under Article 226 of the Constitution of India espouses a cause of action against the Registrar of Trade Marks-respondent no.1, in regard to non-renewal of three trademarks of the petitioner, which according to the petitioner inadvertently could not be renewed and which have continued to remain on the Register of Trade Marks. The petitioner contends that post 17 February 1983, the registration of these marks remained to be renewed. However, the marks continued to be reflected as the petitioner’s registered marks in the trade mark register, as seen on the official website of the Registrar of Trade Marks. It is contended that also a notice under sub-section (3) of Section 25 of the Trade Marks Act, 1999 read with Rule 58 of the Trade Mark Rules, 2017 was not received by the petitioner from respondent no. 1 in regard to the removal of these marks consequent to the non-renewal of the registration of the said marks. Such RTI applications were responded by the office of respondent no. 1 inter alia stating that no removal notice was issued, dispatched or delivered by respondent no. 1, in relation to any of the registrations of the subject marks. This stood confirmed by the impugned rejection generated by the system, with a remark which was to the effect that the petitioner's 'Application cannot be renewed (delay of more than one year)'.

The petitioner filed a writ petition under Article 226 of the Constitution of India before the Bombay High Court. The petition was heard and disposed of on 16 February 2024.

• Trade Marks Act, 1999: Section 25(3)
• Trade Marks Rules, 2017: Rule 58
• Constitution of India: Article 226
• Right to Information Act, 2005: