Delhi HC: Trademark Renewal Notice Sent to Obsolete Address Cannot Prejudice Registered Proprietor

Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration

Date: 01.10.2026

Delhi HC: Trademark Renewal Notice Sent to Obsolete Address Cannot Prejudice Registered Proprietor

The Delhi High Court has allowed a writ petition filed by Rajinder Singh, permitting him to file a fresh Form TM-R for renewal of his registered trademark “B.P.R.”, after finding fault with the Trade Marks Registry for sending the statutory renewal notice to the old address of the proprietor’s erstwhile trademark agent despite having consistently corresponded with the agent at its updated address for years.

Justice Tushar Rao Gedela held that once the Registry had, “for all intents and purposes,” taken note of the fresh address and itself used that address for communications—including sending the registration certificate—it could not subsequently rely upon the proprietor’s failure to file the prescribed form for formally changing the address for service.

The Court also reiterated the importance of the Registrar’s statutory obligation under Section 25(3) of the Trade Marks Act, 1999, holding that the renewal notice requirement cannot be reduced to a mere procedural formality.

B.P.R. Trademark Adopted in 1979

• According to the petition, Rajinder Singh first adopted and began using the trademark “B.P.R.” on 1 April 1979 for products including electric motors, grinders, polishers, mono block pump sets, air compressors, A.C. generators and submersible pump sets.
• An application bearing No. 870775 in Class 7 was filed on 11 August 1999 for registration of the B.P.R. word mark.
• The Trade Marks Registry initially raised objections. The petitioner’s trademark agent submitted a response to the examination report, following which the application was accepted and published in the Trade Marks Journal on 25 August 2003.
• At that stage, the agent was Super Trade Mark Co., whose original address was at State Bank Nagar, Paschim Vihar, New Delhi.

Opposition Filed Against B.P.R. Mark

• In January 2004, M/s Phillips Brake Rubber Company filed an opposition against the trademark application.
• The petitioner filed a counter-statement on 1 July 2004. Along with it, a fresh Power of Attorney in Form TM-48 was filed, reflecting the agent’s new address at 159-E, Kamla Nagar, Delhi-110007.
• The opponent subsequently communicated with the Registry at this updated address.
• During the pendency of the proceedings, another Power of Attorney dated 25 September 2014 was filed to communicate the change in the agent’s legal name from Super Trade Mark Co. to Concept Legal, while retaining the Kamla Nagar address.

Registry Itself Repeatedly Used the New Address

• This became a crucial fact before the High Court.
• Hearing notices dated 5 September 2015, 15 October 2015, 22 August 2017 and 14 December 2017 were all sent by the Trade Marks Registry to the agent’s new address.
• The opposition was eventually dismissed on 23 February 2018 under Rule 50(4) of the Trade Marks Rules, 2017 after the opponent failed to appear.
• The B.P.R. application was consequently ordered to be registered, and a registration certificate was issued on 27 May 2018.
• Thus, the Registry was not merely informed about the updated address—it had itself been using the new address for official communications.

Trademark Renewed for Ten Years From 11 August 2009

• Rajinder Singh subsequently filed Form TM-R on 24 September 2018 for renewal of the trademark.
• On 28 September 2018, the Registrar informed him that Application No. 870775 had been renewed for ten years from 11 August 2009, and the renewal had been published in the Trade Marks Journal.
• Significantly, this communication was also sent to the agent at its updated Kamla Nagar address.
• The next renewal therefore fell due on 11 August 2019.

Renewal Notice Sent Back to the Old Address

• The dispute arose when the Registry issued the statutory RG-3/O-3 renewal notice in May 2019.
• Instead of sending the notice to the address which it had been consistently using, the Registry sent it to the agent’s original address at 14, State Bank Nagar, Paschim Vihar, New Delhi.
• The notice was returned with the endorsement “no such firm” and was received back by the Registry on 29 May 2019.
• The petitioner maintained that he remained unaware of any statutory intimation concerning renewal.
• It was only after appointing a new agent in December 2025 that the position was discovered. An attempt was then made to file Form TM-R electronically, but the Trade Marks Registry’s online filing system did not permit the renewal application to be filed. This led to the writ petition before the Delhi High Court.

Registry: Petitioner Never Filed Correct Form to Change Address for Service

• The Trade Marks Registry defended its action on a technical but significant ground.
• It argued that the petitioner had never filed the prescribed Form TM-16, now Form TM-M, for formally changing the address for service.
• According to the Registry, Form TM-48 merely authorises an agent and cannot substitute for the prescribed form for changing the address for service. Consequently, its electronic database continued to show the original Paschim Vihar address.
• The Registry explained that RG-3/O-3 notices are computer-generated and automatically sent to the address recorded in its database. Unless the appropriate statutory form was filed, the database could not be formally updated.
• It therefore sought to place responsibility on the petitioner for not following the prescribed procedure.

Delhi High Court Finds Registry’s Conduct Inconsistent

• The High Court was not persuaded.
• It considered particularly significant that during the opposition proceedings the change in the agent’s name and address had been communicated to the Registry, following which the Registry itself repeatedly sent official communications to the new address.
• The Court observed that this factual position was undisputed.
• Even the registration/renewal communication had been sent to the updated address.
• Against that background, the Court found it difficult to understand why the crucial RG-3/O-3 renewal notice was suddenly sent to the old address of the erstwhile agent.
• In the Court’s words, it was “unfathomable” why the Registry would issue the renewal notice to the old address in such circumstances.

No Proof That Renewal Notice Was Served on Proprietor

• The Registry additionally contended that the RG-3/O-3 notice had been sent directly to Rajinder Singh at the address recorded for him.
• The petitioner denied receiving it.
• Crucially, the Registry produced no proof of delivery.
• The High Court therefore held that it would be difficult to presume deemed service upon the petitioner merely because the notice was claimed to have been dispatched to his address.
• This finding became important because Section 25(3) places a statutory obligation on the Registrar regarding notice before expiry of trademark registration.

Registry Cannot Rely on Technical Non-Compliance After Acting on Updated Address

• The Court rejected the Registry’s contention that failure to file the technically correct form for change of address defeated the petitioner’s case.
• It reasoned that once the Registry had actually taken note of the fresh address and had itself corresponded at that address—including sending the registration certificate—it could not subsequently contend that the petitioner had failed to comply with the prescribed rules.

The Court held:

• “Once the Trade Marks Registry, for all intents and purposes has noted the fresh address of the Agent… it does not lie in the mouth of the respondent to now contend that the petitioner has not complied with the prescribed Rules.”
• The Registry’s objection was accordingly rejected.

Section 25(3) Renewal Notice Is “Sacrosanct”

• The High Court relied heavily upon its earlier judgment in Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, W.P.(C)-IPD 37/2025, decided on 17 February 2026.
• In Coldsmiths, the Court had explained that Section 25(3) of the Trade Marks Act places the mandate upon the Registrar to send the prescribed notice to the registered proprietor concerning the date of expiration and renewal requirements.
• The provision assumes considerable importance because failure to renew a trademark may result in the registration lapsing and potentially leave the mark open to adoption by third parties.
• For that reason, the Court had characterised the statutory mandate under Section 25(3) as “sacrosanct”, rather than a procedural requirement without substantive consequences.

Notice to an Unauthorized or Outdated Agent Is Not Statutory Compliance

• The Court reproduced the principle from Coldsmiths that sending Section 25(3)/RG-3 notices to a person who was not the authorised agent on the date of issuance cannot constitute proper compliance with the statutory mandate.
• The Registrar must not only issue the notice but remain vigilant regarding changes in authorisation that have been communicated to the Registry.
• This principle was particularly relevant in Rajinder Singh’s case because the Registry had years of correspondence demonstrating actual knowledge and use of the agent’s new address.

Burden Under Section 25(3) Is on Registrar, Not Trademark Proprietor

• Another important proposition reaffirmed by the Court concerns responsibility for renewal notices.
• Referring again to Coldsmiths, the Court noted that an argument that the proprietor could independently have approached the Registry for renewal before expiry—or within six months thereafter—does not displace the statutory requirement.
• The mandate under Section 25(3) lies upon the Registrar, not the proprietor.
• The ruling therefore reinforces that the statutory renewal-notice mechanism has independent significance and cannot simply be neutralised by arguing that the trademark proprietor ought to have monitored the expiry date himself.

6.5-Year Delay Not Barred by Delay and Laches

• A notable aspect of the judgment is that the petitioner approached the Court after approximately 6.5 years.
• The High Court nevertheless held that, in the circumstances, the petition should not be defeated on the ground of delay and laches.
• The Court referred to Coldsmiths Retail Services, where a delay of approximately 1.5 to 2 years had been condoned, and Charanjiv Kumar Taneja Trading as Chirag Enterprises v. Registrar of Trade Marks, LPA 461/2023, decided on 25 July 2023, where a delay of 16 years had been condoned in similar circumstances.
• Accordingly, the 6.5-year delay in the present matter did not prevent the Court from granting relief.

Challenge to Rules 58(2) and 58(3) Not Decided

• The original petition had also sought a declaration that Rules 58(2) and 58(3) of the Trade Marks Rules, 2017 were ultra vires the Trade Marks Act and unconstitutional.
• However, during the proceedings, the petitioner expressly stated that those prayers were not being pressed and sought liberty to challenge the validity of the Rules through an appropriate proceeding.
• The High Court granted that liberty.
• Therefore, the judgment should not be understood as striking down or declaring Rules 58(2) or 58(3) invalid.

Final Decision: Fresh TM-R Permitted

• The Delhi High Court ultimately accepted the petitioner’s contentions and allowed the writ petition.

Rajinder Singh was permitted to file a fresh Form TM-R for the trademark registered in his name, subject to payment of:

• the prescribed renewal fee; and any fine payable under the applicable Rules.
• The fresh TM-R must be filed within 15 days from the date of the judgment.
• The Registrar of Trade Marks was directed to accept the application if filed within the stipulated period and process it in accordance with the Rules.
• The entire exercise must be completed within eight weeks from receipt of the Form TM-R. The writ petition and pending applications were accordingly disposed of.

Why This Judgment Matters for Trademark Owners and Practitioners

• The ruling is significant for trademark renewal practice because it addresses the interaction between formal procedural requirements for updating an address for service and the Registry’s own actual conduct.
• The judgment does not suggest that trademark proprietors may routinely ignore prescribed forms for updating their addresses. Rather, its reasoning is tied to the unusual facts: the Registry had repeatedly used the new address for years and had even sent the registration/renewal communication there, yet reverted to an obsolete address when issuing the critical statutory renewal notice.
• The ruling also reinforces the substantive importance of Section 25(3). Where failure to renew can lead to loss of registration and expose the mark to third-party adoption, the statutory renewal notice cannot be treated as an inconsequential procedural exercise.

Key Takeaway

• The Delhi High Court’s ruling in Rajinder Singh v. Registrar of Trade Marks establishes an important practical safeguard for registered trademark proprietors: where the Trade Marks Registry has actually recognised and consistently used an updated address of an authorised agent, it cannot ordinarily rely on its own outdated database to justify sending the critical Section 25(3) renewal notice to the old address and then place the consequences entirely upon the proprietor.
• The Court accordingly permitted renewal proceedings to be revived even after a 6.5-year delay, while requiring the proprietor to file a fresh TM-R and pay the prescribed fee and applicable fine.

Cases Referred

The judgment principally relies upon:

1. Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, W.P.(C)-IPD 37/2025, decided on 17 February 2026 — on the mandatory and “sacrosanct” nature of the Section 25(3) renewal notice.
2. Charanjiv Kumar Taneja Trading as Chirag Enterprises v. Registrar of Trade Marks, LPA 461/2023, decided on 25 July 2023 — referred to in relation to condonation of substantial delay in similar circumstances.

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi