Assignee of Trademark must apply for recording the assignment within a reasonable time, but failure to do so does not extinguish renewal rights.
Brief Facts of the Case:
The petitioner, Designo Lifestyle Solutions, acquired the trademark "SO FA, SO GOOD" (Trade Mark No. 1775649, Class 99) through an assignment deed dated 30 September 2010. However, the petitioner did not apply for recording the assignment until 2024. The trademark was due for renewal on 19 January 2019, and the Trade Marks Registry issued an expiry notice on 27 January 2018 to the predecessor-in-interest, rather than the petitioner. The petitioner sought renewal in 2024, but the Registrar of Trade Marks refused on the ground that renewal was not permissible beyond a one-year delay.
Brief Issue:
Whether the petitioner was entitled to renewal of the trademark despite the expiration of the statutory renewal period and the failure to register the assignment in a timely manner.
Reasoning of the Court
The Court noted that the trademark had not been removed from the register.
The Trade Marks Registry failed to provide evidence that the expiry notice was properly served on either the predecessor-in-interest or the petitioner.
The petitioner was indeed obligated to apply for recording the assignment in a reasonable timeframe, but this delay alone did not justify denying renewal.
Relying on Jaisuryas Retail Ventures v. The Registrar of Trade Marks, 2024:MHC:3109; 2024(100) PTC 25 (Mad), the Court held that if a trademark remains on the register and no steps for removal have been taken, renewal should be permitted with reasonable conditions.
Decision:
The Court allowed the writ petition and directed the Registrar of Trade Marks to enable the petitioner to file a renewal application within 30 days, subject to payment of ₹20,000 as costs to the Adyar Cancer Institute.
Law Point Settled:
If a trademark remains on the register without removal proceedings, renewal may be allowed even after the statutory period lapses.
The Trade Marks Registry must serve expiry notices to the registered proprietor, and failure to do so can justify discretionary relief.
An assignee must apply for recording the assignment within a reasonable time, but failure to do so does not extinguish renewal rights.
Designo Lifestyle Solutions Vs The Registrar of Trade Marks
Date of Order: 25 February 2025
Case Number: W.P.(IPD) No.35 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
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
