Expiry Notice To Unauthorized Agent Not Compliant With Trade Marks Act: Delhi High Court Allows Renewal Of 8 Marks

The Delhi High Court has permitted renewal of eight trademarks after holding that expiry notices sent to an unauthorized agent do not amount to compliance with the Trade Marks Act.

Justice Tushar Rao Gedela ruled that issuing notices to a person who was no longer authorised does not satisfy Section 25(3) of the Trade Marks Act.

“The fact that the notices contemplated under Section 25(3) of the Act and RG-3 notices were issued to a person who, as on the date of issuance of such notices, was not an authorized agent, keeping in view the facts before this Court, cannot be said to be compliance of the statutory mandate envisaged under the Act or the Rules framed thereunder.”, it said.

Coldsmiths Retail Services Pvt Ltd had acquired eight trademarks, including “Pineapple Pop”, through a 2018 assignment from Nirula's Corner House Pvt Ltd. It filed Form TM-P to record the change of ownership and Form TM-M appointing a new authorised agent, expressly revoking earlier authorisations.

While the Registry updated the proprietor's name, it failed to update the agent's details. When the marks expired in July 2023, RG-3 renewal notices were sent to the previous agent.

Coldsmiths discovered the lapse only when the online portal blocked renewal attempts with the message: “application cannot be renewed (delay of more than one year).”

The Registrar argued that a Rs.900 fee for recording the change of agent had not been deposited and that notices were therefore correctly sent to the agent reflected in its records.

The court rejected the defence. It held that if there was any doubt about the agent's authority, the Registry should have notified the proprietor directly.

“Thus, if the respondent was of the opinion that there is a doubt about the authorization of the agent whose name is reflected in the records, it ought to have issued the RG-3 notices to the petitioner directly.”, it said.

Calling the statutory requirement mandatory, the Court said:

“In other words, the provision of Section 25(3) of the Act is sacrosanct.”, it added.

The court also held that the Registry cannot shift the burden onto the proprietor.

“The contention of the respondent that the petitioner too could have approached the Trade Marks Registry for renewal of its registrations before the expiry or before the date of expiry or before the expiry of six months thereof, is unsustainable in law. As held above, the mandate is on the Registrar and not the petitioner under Section 25(3) of the Act.”

Warning against mechanical removal, the Court said:

“It is also significant to bear in mind that the non-renewal due to lapse of intimation of the information contemplated under Section 25(3) of the Act would result in a drastic consequence to the registration of the trademarks, inasmuch as the said registration of a particular mark would lapse, making such trademark susceptible to be adopted by a third party. This may lead to unnecessary and easily avoidable litigation.”

Allowing the writ petition, the court permitted Coldsmiths to file fresh renewal applications within 10 days and directed the Registrar to process them within eight weeks.

For Coldsmiths: Senior Advocate Sanjeev Puri with Advocates Pragya Puri and Georgey V. Matthew

For Registrar of Trade Marks: CGSC Nidhi Raman with Advocates Om Ram and Nikita Singh