Court finds Registrar of Trade Marks failed in sending renewal notice to updated address, allowing late renewal of Rajinder Singh's trademark registration.
In a notable decision, the Delhi High Court has ruled in favor of Rajinder Singh in a case against the Registrar of Trade Marks concerning the renewal of his trademark. The court, presided over by Justice Tushar Rao Gedela, addressed the procedural lapses by the Registrar in failing to send a renewal notice to the updated address of Singh's trademark agent, allowing Singh to renew his trademark registration by filing a new application.
The trademark in question, bearing application number 870775 in Class-7 for the mark "B.P.R.," was first registered on 11th August 1999. The petitioner, Rajinder Singh, had continuously communicated address changes to the Registrar, but the renewal notice for the trademark was erroneously sent to an old address. This procedural oversight was identified as inconsistent with the statutory mandate under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017, which require proper service of renewal notices.
The court noted that although Singh had not filed the prescribed Form TM-16 to formally update the address, the Registrar had acknowledged the new address by sending several communications, including the Registration Certificate, to it. The court emphasized the critical nature of renewal notices, as lapses in communication could lead to the expiration of trademark rights, potentially inviting disputes and litigation.
Significantly, the court also addressed the issue of delay, condoning a 6.5-year delay in filing the writ petition. It cited precedents where similar delays, even up to 16 years, had been condoned due to procedural lapses by the Registrar.
Ultimately, the court allowed Singh to file a fresh Form TM-R for the renewal of his trademark, subject to payment of the prescribed fees and fines. The decision underscores the importance of vigilance and compliance with statutory requirements by the Registrar of Trade Marks to prevent unnecessary litigation and ensure the protection of intellectual property rights.
Bottom line:-
Trade Marks Act, 1999 - Registrar's failure to send renewal notice to updated address despite previous correspondence on that address - Petitioner allowed to renew trademark registration by filing fresh Form TM-R within prescribed timeline.
Statutory provision(s): Trade Marks Act, 1999 Section 25(3), Trade Marks Rules, 2017 Rule 58
Rajinder Singh v. Registrar of Trade Marks, (Delhi) : Law Finder Doc id # 2897043
