Trademark Registry Cannot Refuse Renewal While Mark Remains On Register: Madras High Court

Justice A.D. Maria Clete observed, "So long as the mark stands on the register in the petitioner's name, the Registrar cannot refuse her renewal fee. The message on the portal is not an order under the Act."

R. Booma Rani runs Ayyanar Match Works in Sattur, Tamil Nadu. She owns the "THOTHA" label, which is written in Hindi with the picture of a parrot, and has used it for safety matches since 01.08.1990.

When her counsel tried to renew it online in September 2025, the portal said "Application cannot be Renewed (Delay of more than 1 year)". She then approached the High Court under Article 226 seeking a writ of mandamus.

The delay was not hers, she said. She applied for registration in 2007 through trade mark agents. A rival, Agarwal Gudakha Factory, opposed the application, and after she filed her evidence in 2009, nothing happened for about thirteen years.

The first hearing was fixed only in 2022. The opposition was dismissed in 2023 and the registration certificate was issued the next day, nearly sixteen years after she applied. By then, the first ten-year term, which counts from the date of application, had ended on 20.02.2017.

She said she never learned of this. Her former agents had told her all Registry letters would go only to them, and she had lost touch with them. The local body had also changed her premises' door number from 2/222 to 2/656, so the hearing notice of 29.12.2022 sent to the old number came back undelivered.

She found out about the registration only on 25.09.2025, through her present counsel. When he went to the Registry, he was told Rule 58(3) of the Trade Marks Rules, 2017 had expired and was advised to seek condonation of delay. She wrote on 18.11.2025, and in January 2026 he was told orally that the Registry cannot condone delay. She added that the Registry had wrongly recorded her label mark as a word mark.

The Registry said the certificate had been served by email on her counsel and published in the Journal. It said the Act has no provision to condone delay and that she should have applied with surcharge by 07.02.2024. It also argued that its notices went unanswered and that she never told it about any change of address.

Booma Rani denied that any email was sent. She pointed out that the Registry's own e-Register shows the email column blank.

The Court framed the question as whether the Registrar, when a mark is registered after its first renewal date has already passed and has not been removed from the register, can refuse the owner's renewal application because the time is over.

It began with Rule 58(3), which allows renewal within six months of the actual date of registration in such cases and says that, if the fee is not paid, the Registrar "shall, subject to rule 60, remove the trade mark from the register." The Court observed that "removal is therefore a separate step that the Registrar must take, and take openly," with advertisement in the Journal under Rule 59.

The Court found the Registry's email claim unproved: "No e-mail address, date or dispatch record is produced." It noted that the counter did not say the certificate went to the agents then on record, and held that "publication in the Journal is not issue of the certificate to the applicant under Section 23(2)."

The Court said the mark's continued presence on the register was decisive. "More importantly, the mark has not been removed. The only consequence Rule 58(3) attaches to non-payment within six months is removal by the Registrar. More than three and a half years later, that step has not been taken; the counter says only that the mark 'will be removed in due course'." 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 its conclusion did not depend on accepting the argument that the six months run only from receipt of the certificate. "Nor is this Court condoning delay. It holds only that no time bar operates against renewal of a mark that is still on the register." It also noted that the Registry itself admitted no third party is affected, and that the order decides only her right to seek renewal and does not touch others' rights.

Allowing the petition, the Court directed that Booma Rani may file a renewal application in Form TM-R, with the prescribed fee and any applicable surcharge, within four weeks of receiving the order.

The Registry must either enable online filing or accept a physical application. It must then process the application and, if otherwise in order, renew the registration under Section 25(2) for February 20, 2017, to February 20, 2027 within four weeks, and must not remove the mark until then.

She may also apply for the next renewal, due on 20.02.2027. The Registry must separately consider her requests to correct the entry from word mark to label mark and her address change (Form TM-P dated 18.11.2025), after hearing her if any request is to be refused.

For Booma Rani: Advocate M.Muhuntha Balan

For Registrar: Senior Panel Counsel Sushma