The Madras High Court has held that the Registrar of Trade Marks cannot refuse to accept a renewal application merely because the prescribed renewal period has expired, so long as the trade mark continues to remain on the register and has not been formally removed.
Justice A.D. Maria Clete allowed a petition concerning the trade mark “THOTHA” (Hindi label), registered in Class 34. The petitioner had applied for registration in 2007, but an opposition remained pending for nearly 13 years. The opposition was dismissed in February 2023 and the registration certificate was issued on February 7, 2023, by which time the first ten-year term, calculated from the application date, had already expired.
When the petitioner subsequently attempted to renew the mark, the Trade Marks Registry portal did not permit filing and displayed that renewal could not be made due to a delay of more than one year. The Registry contended that the period under Rule 58(3) of the Trade Marks Rules, 2017 had expired.
The Court, however, held that Rule 58(3) does not by itself extinguish the proprietor’s right to seek renewal where the mark has not been removed from the register. The Court noted that removal is a separate statutory step which the Registrar must undertake under the Rules.
Relying on its earlier decision in Jaisuryas Retail Ventures Pvt. Ltd. v. Registrar of Trade Marks, 2024:MHC:3109, the Court held that an application for renewal may be made so long as the mark continues to remain on the register. It further rejected the Registry’s claim that the registration certificate had been emailed to the petitioner, noting that no email address, date or dispatch record had been produced and the Registry’s own e-Register showed the email column as blank.
The Court observed that the mark had still not been removed more than three-and-a-half years after the expiry of the six-month period contemplated under Rule 58(3). It held that “so long as the mark stands on the register in the petitioner’s name, the Registrar cannot refuse her renewal fee.” The Court clarified that it was not condoning delay, but merely holding that no time bar operates against renewal while the mark remains on the register.
The Registry was directed to enable the petitioner to file the renewal application online or accept it physically and, if otherwise in order, renew the registration for the period from February 20, 2017 to February 20, 2027. The petitioner was also permitted to apply for the subsequent renewal due on February 20, 2027.
