Bombay High Court Dismisses 'SUNDAY' Trademark Renewal Plea, Finds Notice Properly Dispatched

The Bombay High Court has dismissed a writ petition seeking renewal of the trademark "SUNDAY".

It held that the Trade Marks Registry had discharged its obligation to issue a renewal notice before the registration expired by proving that it had been properly dispatched.

A division bench of Acting Chief Justice Ravindra V. Ghuge and Justice Gautam A. Ankhad held that once the Registry proved proper dispatch of the notice to the address for service, the statutory presumption of service came into operation.

It found that the petitioners had failed to rebut that presumption.

Raju Patel, the original proprietor of the trademark, and Matra Mobili Private Limited, to which the mark was assigned in November 2024, approached the court seeking directions to renew the registration.

They also sought removal of the "Trademark is likely to be removed due to non-filing of Renewal request given the prescribed time-limit" alert displayed on the Trade Marks Registry's website.

Patel obtained registration of the trademark in 2011 after claiming prior use since 2008. The registration remained valid until May 29, 2019. The Registry dispatched a renewal notice in Form RG-3 to Patel's registered trademark agent, Vishesh & Associates, by Speed Post on March 1, 2019. No renewal application was filed before the registration expired. Nor was any application filed during the additional six-month period available thereafter.

More than five years later, Patel sought permission from the Registrar to renew the mark. He contended that the statutory notice had never been served. After the assignment, Matra Mobili sought details of the notice through an application under the Right to Information Act.

The Registry confirmed that the notice had been sent by Speed Post. However, the tracking number no longer generated any result on the India Post website.

It was argued that the Registrar could not remove the trademark without issuing the mandatory notice. They contended that producing a dispatch number alone was insufficient because the registry statute madated service of notice.

Rejecting the contention, the bench held that the statutory framework requires proof of proper dispatch rather than proof of actual acknowledgment by the addressee.

The bench observed, "The Respondent has produced contemporaneous material, i.e. extract of its Outward dispatch register demonstrating that the statutory notice dated 26th February, 2019 was dispatched by India Post (Speed Post) on 1st March, 2019."

The bench noted that the Registry had also produced the correspondence details, dispatch number and consignment number relating to the notice. It found that the records supported the Registry's case that the notice had been dispatched.

The court also rejected the petitioners' reliance on the absence of online postal tracking records.

It observed, "the non-availability of online tracking details after six years cannot give a cause of action to Petitioner No.2 to allege that the notice was never dispatched."

The bench further noted that Vishesh & Associates, the registered trademark agent to whom the notice had been sent, was not a party to the proceedings. It also noted that the firm had not filed any affidavit denying receipt of the notice.

The bench observed that Patel had remained inactive for more than five years before seeking renewal. It also held that Matra Mobili, as an assignee, could not acquire a better right than its assignor.

Holding that the petitioners had failed to displace the statutory presumption of service, the bench dismissed the writ petition.

It made no order as to costs.