Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 03.10.2026
Delhi HC: Trade Marks Registry Cannot Remove Mark Without Complying With Mandatory Section 25(3) Notice
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
In an important ruling concerning renewal and removal of registered trademarks, the Delhi High Court has held that the statutory obligation imposed upon the Registrar of Trade Marks under Section 25(3) of the Trade Marks Act, 1999 to send notice of expiry to the registered proprietor cannot be treated as a mere procedural formality.
Justice Tushar Rao Gedela described the requirement under Section 25(3) as βsacrosanctβ, observing that expiry of a trademark registration can have drastic consequences, including exposing the mark to adoption by third parties and generating avoidable litigation.
Allowing the writ petition filed by Coldsmiths Retail Services Private Limited, the Court permitted the company to file fresh Form TM-R for all eight trademarks, subject to payment of the prescribed fee and applicable fine.
Coldsmiths Sought Protection of Eight Registered Trademarks
- The petition under Article 226 of the Constitution of India sought directions restraining the Registrar of Trade Marks from removing eight trademarks bearing Registration Nos. 1214096, 1214098, 1214099, 1214100, 1214102, 1214103, 1214104 and 1214105 from the Register on the ground of non-renewal.
- Coldsmiths also sought a direction requiring the Registrar to renew the registrations.
- The registrations originated from applications filed on 14 July 2003 by Nirula’s Corner House Private Limited, the petitioner’s predecessor-in-interest. Registration certificates for the eight marks were subsequently issued between December 2005 and March 2007.
Trademarks Assigned to Coldsmiths
- On 3 January 2018, Nirula’s Corner House executed an assignment deed transferring ownership of the trademarks to Coldsmiths Retail Services Private Limited.
- Thereafter, a new agent, Mr. Munesh Kumar Gaur, was appointed and previous authorisations were revoked.
- On 12 January 2018, Form TM-M along with the Power of Attorney was filed with the Trade Marks Registry requesting that communications concerning the trademarks be sent to the newly appointed agent. Coldsmiths simultaneously filed Form TM-P for each trademark to record the change of ownership.
- The Registry acted upon Form TM-P and changed the registered proprietor’s name to Coldsmiths.
Expiry Notices Allegedly Sent to Former Agent
- The eight registrations were valid until 14 July 2023.
- According to the Registry, notices under Section 25(3) were issued on 7 June 2023 in respect of seven of the eight trademarks. The judgment records that there appeared to be no such notice for the βPineapple Popβ trademark in Class 30.
- Coldsmiths maintained that neither it nor its newly appointed authorised agent received the statutory expiry notices.
- When the company later attempted to file Form TM-R seeking renewal, the online portal blocked the application on the ground that the delay was more than one year. This prompted Coldsmiths to approach the Delhi High Court.
Registry Continued to Recognise the Former Agent
- The dispute arose because the Trade Marks Registry continued to show Mr. Sashidhar S., the former agent, in its records.
- Coldsmiths argued that the Registry had already been informed that Mr. Munesh Kumar Gaur had been appointed as the new authorised agent and that all previous authorisations stood revoked. Nevertheless, the statutory notices were issued to the former agent rather than to Coldsmiths or its actual authorised representative.
- The Registry’s explanation was that the Form TM-M seeking change of authorised agent had not been accompanied by the prescribed βΉ900 fee, and therefore the previous agent’s name continued to remain in the records.
Delhi HC Rejects Registry’s βΉ900 Fee Defence
- The High Court was not persuaded by this explanation.
- The Court found that the assignment, Power of Attorney and Form TM-M clearly demonstrated that the former agent’s authority had been revoked and Mr. Munesh Kumar Gaur had been appointed as the new agent.
- It further noted that Coldsmiths had filed Form TM-P for all eight trademarks and paid the prescribed βΉ9,000 fee, following which the Registry itself changed the name of the registered proprietor to Coldsmiths.
- The Court held that if there was a deficiency arising from non-payment of βΉ900 with Form TM-M, the Registry ought to have informed the petitioner of that deficiency. Having failed to do so, it could not subsequently place the fault entirely upon the trademark proprietor.
Notice Sent to Unauthorised Former Agent Is Not Valid Compliance
- This became one of the most important findings of the judgment.
- The High Court noted that although RG-3 notices had been issued, they had been sent to a person who was no longer the petitioner’s authorised agent when those notices were issued.
- The Court observed that the Power of Attorney and Forms TM-M clearly indicated that Mr. Munesh Kumar Gaur was authorised to receive communications from the Trade Marks Registry.
- The Court further held that mere non-payment of the fee associated with Form TM-M could not ipso facto deprive Coldsmiths of its entitlement to receive the statutory notices under Section 25(3).
- Significantly, Section 25(3) itself contemplates notice to the registered proprietor. Therefore, if the Registry had any doubt regarding the status of the authorised agent, it could and should have sent the expiry notice directly to Coldsmiths.
Section 25(3) Obligation Is on Registrar, Not Trademark Proprietor
- The Court undertook a detailed examination of the statutory mandate contained in Section 25(3).
- It held that the Legislature had placed an obligation upon the Registrar to send notice, in the prescribed manner, to the registered proprietor informing it of the date of expiration and the conditions relating to payment of renewal fees.
- The Registrar must therefore satisfy itself that the notice is issued to the registered proprietor or its duly authorised agent and must remain vigilant regarding any change in authorisation communicated to the Registry.
- The Court emphasised that failure to renew a trademark can produce drastic consequences: the registration may lapse and the mark may become susceptible to adoption by a third party.
It therefore held that the Section 25(3) requirement could not be reduced to a procedural technicality:
βThe provision of Section 25(3) of the Act is sacrosanct.β
Sending RG-3 Notice to Unauthorised Person Does Not Satisfy Statute
- Applying that principle to the facts, the High Court held that sending the Section 25(3)/RG-3 notices to a person who was not the authorised agent on the relevant date could not amount to compliance with the statutory mandate under the Trade Marks Act and Rules.
- This finding is particularly significant for trademark proprietors because it distinguishes between the mere generation or issuance of a notice and legally compliant communication to the person contemplated by the statute.
Registry Cannot Shift Entire Responsibility to Trademark Owner
- The Registrar argued that Coldsmiths could independently have applied for renewal before expiry or within the subsequent six-month statutory period.
- The Delhi High Court expressly rejected this argument.
- It held that the mandate under Section 25(3) lies upon the Registrar and not the petitioner. Consequently, the Registry could not defend its own failure to comply with the statutory notice requirement merely by arguing that the trademark proprietor should have acted independently.
Delay and Laches Cannot Defeat Renewal Where Valid Notice Was Never Sent
- The Registry also resisted relief on the ground that Coldsmiths had approached the Court after the registrations had already expired.
- The High Court rejected this objection by relying upon the Division Bench decision in Charanjiv Kumar Taneja Trading as Chirag Enterprises v. Registrar of Trade Marks, LPA 461/2023, decided on 25 July 2023.
- In Charanjiv Kumar, the Division Bench had held that trademark renewal or removal does not hinge simply upon the doctrine of laches. Section 25 imposes a positive obligation upon the Trade Marks Registry to send the prescribed notice.
- Importantly, the Division Bench had distinguished between generation of a notice and actually sending or dispatching it, holding that mere generation does not satisfy the statutory obligation.
- The Court also noted that Charanjiv Kumar had permitted renewal even after 16 years because no valid notice had been issued. It held that the ratio applied squarely to Coldsmiths’ case both on merits and on the issue of delay and laches.
Removal of Trademark Is Not Automatic
- The judgment also reproduces an important principle from Charanjiv Kumar concerning the language of Section 25(3).
- The provision states that the Registrar βmay removeβ a trademark if the registered proprietor fails to comply with the conditions specified in the statutory notice.
- The Division Bench had held that this language negates the assumption that removal is an automatic or inevitable consequence of failure to renew within time.
- Thus, the statutory notice assumes particular importance before the serious consequence of removal from the Register can follow.
Delhi HC Allows Coldsmiths to File Fresh TM-R Applications
- Having found the statutory notice requirement unfulfilled, the Delhi High Court allowed the writ petition.
- Coldsmiths was permitted to file fresh Form TM-R in respect of all eight registered trademarks within 10 days, upon payment of the prescribed fee and any fine payable under the Trade Marks Rules.
- The Registrar was directed to accept the applications and process them in accordance with the Rules.
- The entire exercise was directed to be completed within eight weeks from receipt of the Court’s order.
- It is important to note that the Court did not simply declare the registrations automatically renewed. Rather, it reopened the statutory renewal route by permitting fresh TM-R applications and directing the Registrar to accept and process them in accordance with the Rules.
Key Legal Principles Emerging From the Judgment
The judgment establishes several important principles for trademark renewal proceedings:
- Section 25(3) creates a positive statutory obligation upon the Registrar to send the prescribed expiry notice to the registered proprietor.
- A notice sent to a person who is no longer the authorised agent may not constitute valid statutory compliance.
- Where the Registry has been informed of a change of agent, it must remain vigilant about the correct recipient of statutory communications.
- If the Registry doubts the agent’s authority, the Section 25(3) notice can be sent directly to the registered proprietor.
- Failure to pay a fee connected with change of agent does not automatically deprive the registered proprietor of the statutory right to receive an expiry notice.
- The Registrar cannot shift the statutory burden under Section 25(3) entirely onto the trademark proprietor.
- Mere generation of a statutory notice is distinguishable from actually sending it in accordance with law.
- Delay and laches do not by themselves defeat renewal where the mandatory statutory notice was never validly sent.
- Removal of a trademark is not necessarily automatic merely because the registration period has expired.
Why the Judgment Matters
The ruling has considerable practical significance for trademark owners, assignees and IP practitioners, particularly where ownership or authorised representatives have changed during the life of a registration.
The judgment places responsibility on the Trade Marks Registry to ensure that its records and statutory communications reflect material changes properly brought to its notice. More importantly, it prevents the drastic consequence of losing a registered trademark from being founded merely upon an administrative communication sent to an unauthorised person. At the same time, trademark owners should continue to independently monitor renewal deadlines.
The judgment provides relief based on the Registry’s failure to discharge the specific statutory obligation under Section 25(3); it should not be read as eliminating the proprietor’s broader commercial interest in timely renewal.
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Source: Delhi High Court
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