The Trade Marks Registry must issue an expiry notice to the registered proprietor, before removing it from register.
Brief Facts of the Case:
The petitioner, Aurobindo Pharma Limited, had registered the trademark "ENRIL" under Trade Mark No. 636467 in Class 5. The application for registration was filed on 10 August 1994, and the registration certificate was issued on 18 July 2018. The petitioner later attempted to renew the registration, but the online system indicated that renewal was not possible due to the delay exceeding one year beyond expiry.The petitioner argued that the Trade Marks Registry failed to issue a mandatory expiry notice six months before the expiration date. Since the trademark was still shown as "registered" on the official database, the petitioner sought a Writ of Mandamus directing the Registrar to permit renewal.
Brief Issue:Whether the petitioner is entitled to renewal of the trademark despite the statutory deadline for renewal having passed, particularly in light of the alleged failure of the Registrar to serve an expiry notice.
Reasoning of the Court:The Court referred to the official trademark status as of 7 November 2024, which confirmed that the trademark had not been removed from the register.The respondent (Trade Marks Registry) failed to provide evidence that an expiry notice was properly served on the petitioner.
The Court relied on Jaisuryas Retail Ventures Private Limited v. The Registrar of Trade Marks, 2024:MHC:3109; 2024(100) PTC 25 (Mad), which held that if the Registry does not serve an expiry notice and does not remove the mark, the proprietor may seek renewal.The Court also cited P. Pandiyan v. The Registrar of Trade Marks (Order dated 13.02.2025 in W.P.(IPD) No.36 of 2024), where a similar situation arose where the registration certificate was issued after the expiry of the original term, and renewal was allowed.Since no steps had been taken to remove the trademark, the Court concluded that the petitioner could apply for renewal, subject to payment of renewal fees.
Decision:
The writ petition was allowed, and the Court directed the Registrar of Trade Marks to provide access to the online portal for filing a renewal application. Alternatively, the petitioner was permitted to submit a physical renewal application with the requisite renewal fees. No costs were imposed.
Law Point Settled:
If a trademark remains on the register and no steps have been taken for its removal, renewal may be permitted even after the statutory period lapses.The Trade Marks Registry must issue an expiry notice to the registered proprietor, and failure to do so can justify discretionary relief in favor of the applicant.A proprietor can seek renewal despite delays, provided the mark has not been formally removed.
Case Title: Aurobindo Pharma Limited Vs The Registrar of Trade Marks
Date of Order: 25 February 2025
Case Number: W.P.(IPD) No.34 of 2024
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
