Delhi High Court Permits Trademark Renewal After Six Years, Faults Registry Over Defective Renewal Notice

The Delhi High Court has allowed trademark proprietor Rajinder Singh to file a fresh renewal application for his “B.P.R.” mark despite a delay of over six years. It held that the Trade Marks Registry could not rely on technical procedural non-compliance after having consistently sent communications to his updated address.

Justice Tushar Rao Gedela ruled the Registry could not take such a stand after its own conduct showed it had recognised the changed address. “Once the Trade Marks Registry, for all intents and purposes has noted the fresh address of the Agent and has by its conduct of corresponding, even to the extent of sending the Registration Certificate of the petitioner, to the Agent on the new address, it does not lie in the mouth of the respondent to now contend that the petitioner has not complied with the prescribed Rules.”

Singh claimed that he adopted and started using the “B.P.R.” trademark in 1979 for goods including electric motors, grinders, polishers, air compressors, and pump sets.

He filed a trademark registration application in 1999, which was accepted in 2003. Opposition proceedings were later initiated by Phillips Brake Rubber Company in 2004.

During the opposition proceedings, Singh filed a fresh power of attorney in 2004 reflecting his agent's new Kamla Nagar address. Another power of attorney was filed in 2014 after the agent's name changed from Super Trademark Co. to Concept Legal.

The court noted that multiple hearing notices in the opposition proceedings were sent by the Trade Marks Registry to the updated address. Even the registration certificate and renewal communication issued after dismissal of the opposition proceedings were also sent there.

However, when the mark became due for renewal in 2019, the Registry sent the renewal notice to the agent's old Paschim Vihar address. The notice was returned undelivered.

Singh said he discovered the issue only in 2025 after appointing a new agent. The new agent then found that renewal could not be processed through the online system.

The registry argued that Singh had never filed the prescribed form required to formally change the address for service in its database. It contended that filing power of attorney forms could not substitute for the statutory procedure.

Rejecting the contention, the court said it was “unfathomable” that the renewal notice had been sent to the old address. This was despite all prior communications having gone to the updated one.

The court also relied on its recent ruling in Coldsmiths Retail Services Private Limited v Registrar of Trade Marks. It reiterated that service of renewal notices is mandatory and that failure to properly notify a proprietor could have drastic consequences, including loss of trademark protection.

Noting that courts had condoned delays of up to 16 years in similar cases, the High Court held that the present delay of about 6.5 years was not fatal. It allowed Singh to file a fresh renewal application with the prescribed fee and penalty. The Registry was directed to process it within eight weeks.

For Petitioner: Advocates Mohammad Bilal, Rahul Kumar, and Akanksha Singh,

For Respondent: Nidhi Raman, CGSC, with Advocates Om Ram and Ms. Nikita Singh,