P. Pandian v. The Registrar of Trade Marks

Fact of the Case:

The petitioner, P. Pandian, sought renewal of the trademark WAHEED (TM No. 573302) in Class 24. The trademark was registered on 15.05.1992, and a registration certificate was issued on 12.09.2020 after a long procedural delay. However, upon checking the online registry, the petitioner found that the trademark was listed as expired on 15.05.2002. The petitioner was unable to file a renewal application online due to system inaccessibility and hence approached the High Court seeking a writ of mandamus to permit renewal.

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Procedural Background in Brief

1. Trademark application was filed on 15.05.1992.
2. After an examination report and a hearing, the petitioner awaited advertisement before acceptance.
3. The advertisement was published in the Trade Marks Journal on 03.02.2020.
4. The registration certificate was issued on 12.09.2020.
5. The trademark status on the online registry reflected an expiry date of 15.05.2002.
6. The petitioner did not receive a notice of expiry under Rule 58(1) of the Trade Marks Rules, 2017.
7. The petitioner was unable to file a renewal application due to online portal inaccessibility, leading to the filing of the writ petition.

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Reasoning of the Court

1. Failure to Provide Notice: The Trade Marks Rules require that a notice be issued to the trademark holder before the expiration of the registration. Since no such notice was issued, the petitioner was entitled to apply for renewal.
2. Precedents Considered: The Court relied on the Bombay High Court's decision in Motwane Private Ltd. v. Registrar of Trade Marks and the Madras High Court’s own decision in Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks, which held that failure to issue an expiry notice allows the proprietor to seek renewal.
3. No Removal from Register: Since the trademark had not been officially removed from the register, the petitioner still had the right to apply for renewal.

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Decision

The Madras High Court allowed the writ petition and directed the Registrar of Trade Marks to:

1. Provide access to the online portal for the petitioner to file the renewal application.
2. Alternatively, permit the petitioner to submit the renewal application and required documents in physical form.
3. There was no order as to costs.

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Case Details

• Case Title: P. Pandian v. The Registrar of Trade Marks
• Date of Order: 13.02.2025
• Case Number: W.P.(IPD) No.36 of 2024
• Court: High Court of Judicature at Madras
• Hon’ble Judge: Justice Senthilkumar Ramamoorthy