Rajinder Singh v. The Registrar of Trade Marks

The statutory duty of the Trade Marks Registry to issue a proper renewal notice cannot be defeated merely because an outdated address remains in the Registry records, particularly where the Registry itself had acted upon the updated address.

SHORT DESCRIPTION ABOUT THE CASE:

This case deals with renewal of a registered trademark and the obligation of the Trade Marks Registry to properly serve the renewal notice contemplated under Section 25(3) of the Trade Marks Act, 1999. The Delhi High Court considered whether the petitioner could seek renewal after the Registry had sent the renewal notice to an old address of the former trademark agent, despite the Registry having knowledge of and having corresponded with the agent at a subsequently updated address.

FACTS:

The petitioner was the registered proprietor of Trade Mark Application/Registration No. 870775 in Class 7. The trademark had been registered and continued to remain on the Register.

During the earlier opposition proceedings, the petitioner had filed Form TM-48 through his agent. The agent's address had subsequently changed. Further communications and documents were filed before the Trade Marks Registry showing the new address of the agent.

In 2014, another Form TM-48 was filed informing the Registry about the change in the legal name of the agent. The Registry thereafter corresponded with the agent at the new address and even sent the registration certificate to that address.

However, when the time came for renewal of the trademark, the Trade Marks Registry issued the RG-3/O-3 renewal notice to the agent at the old address. The notice was returned with the endorsement that there was "no such firm."

The petitioner subsequently discovered that the trademark was pending renewal and approached the Delhi High Court. The Registry contended that the petitioner had not formally filed Form TM-16 for changing the address for service and therefore the Registry was justified in sending the notice to the address available in its database.

The petitioner contended that the Registry was already aware of the new address and had itself corresponded with the agent at that address. Therefore, the petitioner could not be deprived of renewal merely because a particular procedural form had not been filed.

FINDINGS:

The Delhi High Court allowed the writ petition.

The Court placed particular emphasis on Section 25(3) of the Trade Marks Act, 1999, which requires the Registrar to send notice to the registered proprietor before expiry of the registration, informing the proprietor of the date of expiration and the conditions relating to renewal.

The Court observed that the Registry had, in fact, noted the new address of the agent through its subsequent conduct. The Registry had corresponded with the agent at the new address and had even sent the registration certificate there.

Therefore, the Registry could not subsequently take the position that the new address was completely unknown to it merely because the petitioner had not filed a particular form for formally changing the address for service.

The Court also relied upon its earlier decision in Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, where it had held that the statutory obligation to issue the renewal notice under Section 25(3) rests upon the Registrar and not upon the registered proprietor.

The Court held that, in the circumstances, it would be difficult to presume deemed service merely because the Registry claimed that the notice had been dispatched to an address available in its records. There was no proof of actual delivery of the relevant notice to the petitioner.

The Court therefore permitted the petitioner to file a fresh Form TM-R for renewal upon payment of the prescribed fee and any applicable fine.

SUGGESTION:

Trademark proprietors should ensure that the address for service recorded with the Trade Marks Registry is always updated through the appropriate statutory form whenever there is a change of agent or address.

At the same time, this judgment is important where the Registry itself has actual knowledge of a subsequent address and has acted upon that address in its official correspondence.

If a trademark is removed or renewal is prevented because the renewal notice was sent to an obsolete address, the proprietor should preserve evidence showing that the Registry had knowledge of the correct address, including Forms TM-48, TM-16, correspondence, registration certificates and other Registry communications.

A proprietor should not simply assume that the trademark has been lost because the renewal period has expired. The Registry's compliance with its statutory duty under Section 25(3) should also be examined.

JUDGMENT / PRINCIPLE:

The Delhi High Court allowed the writ petition and directed that the petitioner be permitted to file a fresh Form TM-R within 15 days, along with the prescribed fee and any applicable fine. The Registrar was directed to accept and process the renewal within eight weeks from receipt of the Form.

The important principle is that proper service of the renewal notice under Section 25(3) is a statutory obligation of the Registrar. Where the Registry itself had knowledge of and acted upon an updated address, it cannot mechanically rely upon an obsolete address to defeat the proprietor's opportunity to renew the trademark.