Delhi High Court Restores 8 Trademarks; Holds Expiry Notice To Revoked Agent Not Valid Compliance Under Section 25(3)
Delhi High Court Restores 8 Trademarks; Holds Expiry Notice To Revoked Agent Not Valid Compliance Under Section 25(3)
Introduction
The Delhi High Court has allowed renewal of eight trademarks after holding that expiry notices sent to an unauthorised agent do not amount to compliance with Section 25(3) of the Trade Marks Act, 1999. The Court ruled that the statutory mandate requiring issuance of renewal notice cannot be satisfied by serving notices on a person who was no longer authorised to represent the proprietor.
Factual Background
Coldsmiths Retail Services Pvt Ltd acquired eight trademarks, including “Pineapple Pop,” through a 2018 assignment from Nirula’s Corner House Pvt Ltd. Following the assignment, the petitioner filed Form TM-P to record change in ownership and Form TM-M to appoint a new authorised agent, expressly revoking earlier authorisations.
Although the Trade Marks Registry updated the name of the proprietor in its records, it failed to update the details of the newly appointed agent. When the trademarks expired in July 2023, RG-3 renewal notices were issued to the previous agent whose authority had already been revoked.
Coldsmiths became aware of the lapse only when attempts to renew the marks through the online portal were blocked with the message that renewal was not possible due to delay of more than one year.
Procedural Background
Aggrieved by the refusal to permit renewal, Coldsmiths approached the Delhi High Court by way of a writ petition. The Registrar of Trade Marks contended that a fee of ₹900 for recording the change of agent had not been deposited and that notices were therefore correctly issued to the agent reflected in its records.
The petitioner argued that the statutory obligation under Section 25(3) of the Trade Marks Act is mandatory and that failure to serve proper notice vitiated the removal of the marks from the register.
Issues
1. Whether issuance of renewal notices to a person who was no longer an authorised agent satisfies the requirement under Section 25(3) of the Trade Marks Act.
2. Whether the Registrar can shift the burden of renewal compliance onto the proprietor in the absence of proper statutory notice.
3. Whether the removal of the trademarks from the register was legally sustainable
Contentions of the Parties
The petitioner contended that it had duly filed the necessary forms to record change of ownership and appointment of a new authorised agent. It was submitted that the Registry’s failure to update its records could not prejudice the petitioner’s rights. The petitioner argued that Section 25(3) mandates proper issuance of notice prior to removal, and that such requirement was not fulfilled.
The Registrar contended that since the prescribed fee for recording change of agent had not been deposited, the earlier agent continued to remain on record and notices were validly issued. It was further argued that the petitioner could have independently sought renewal before expiry or within the statutory grace period.
Reasoning and Analysis
Justice Tushar Rao Gedela held that the issuance of notices contemplated under Section 25(3) of the Act and RG-3 notices to a person who was not an authorised agent on the date of issuance cannot be treated as compliance with the statutory mandate.
The Court observed that if the Registry harboured any doubt regarding the authority of the agent reflected in its records, it ought to have issued the renewal notices directly to the proprietor. The statutory requirement under Section 25(3), the Court emphasised, is sacrosanct and must be strictly adhered to.
Rejecting the contention that the burden lay on the proprietor to monitor renewal independently, the Court clarified that the mandate under Section 25(3) rests upon the Registrar. Mechanical removal of trademarks without proper notice, the Court cautioned, results in drastic consequences, rendering marks vulnerable to third-party adoption and leading to avoidable litigation. The Court held that non-renewal due to lapse of intimation under Section 25(3) cannot be sustained in law where statutory notice was not properly served.
Decision
Allowing the writ petition, the Delhi High Court permitted Coldsmiths to file fresh renewal applications for the eight trademarks within ten days. The Registrar of Trade Marks was directed to process the renewal applications within eight weeks thereafter.
In this case the appellant was represented by Mr. Sanjeev Puri with Ms. Pragya Puri and Mr. Georgey V. Matthew, Advocates.
