Renewal of Trademarks Beyond the Statutory Period: Judicial Recognition of Proprietors' Rights
Legal Principle:
If a trademark remains on the register and no steps have been taken for its removal, the registered proprietor may still seek renewal even after the expiration of the statutory period.
Brief Facts of the Case
The petitioner, M/S Sakthi Oil Mills, was the registered proprietor of the trademark "THENALEE," registered under Trade Mark No. 1133971 in Class 29. The mark was initially registered on September 4, 2006, and was subsequently renewed in 2012, extending its validity up to September 17, 2022.
Upon the expiry of the renewal period, the petitioner sought to renew the trademark in October 2024. However, the Registrar of Trademarks denied the renewal request, citing delay beyond the prescribed statutory period. Aggrieved by this decision, the petitioner approached the Hon’ble High Court through a writ petition, seeking a Writ of Mandamus directing the Registrar to allow the renewal.
Key Issue for Determination
The primary question before the Court was whether the petitioner is entitled to seek renewal of the trademark despite the expiration of the statutory renewal period, particularly in light of the Registrar’s failure to take steps for its removal from the register.
Reasoning and Legal Analysis
The Court undertook a thorough analysis of the Trade Marks Act, 1999, relevant judicial precedents, and the factual matrix of the case before arriving at its decision.
The Court noted that as of October 29, 2024, the impugned trademark had not been removed from the register. Since the mark was still officially recorded, the proprietor retained the right to seek renewal, as the Registrar had not exercised its authority to strike off the trademark.
The petitioner relied on the ruling in A. Abdul Karim Sahib and Sons v. Assistant Registrar of Trade Marks, 1973 SCC OnLine Mad 390, where the Madras High Court’s Division Bench affirmed that if a mark remains on the register, the proprietor can apply for renewal even after the expiration period. The Court also referred to Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks, 2024:MHC:3109; 2024 (100) PTC 25 (Mad), where it was reiterated that failure by the Registry to remove an expired mark enables the proprietor to invoke the right to renewal.
The respondent (Registrar of Trademarks) argued that a statutory notice (Form RG-3/13549385) was issued to the petitioner on May 26, 2022, informing them of the impending expiration. However, the Court observed that mere issuance of a notice does not amount to removal of the mark from the register. Since the Registry had failed to take active steps for striking off the trademark, the petitioner could not be deprived of the right to seek renewal.
Recognizing that renewal beyond the prescribed period could set a problematic precedent, the Court sought to balance judicial discretion with procedural discipline. The Court ruled that renewal should be permitted but subject to conditions that discourage laxity in the future.
Court’s Decision
The Hon’ble High Court allowed the writ petition and issued the following directions. The Registrar of Trademarks was directed to permit the petitioner to file a renewal application within 30 days from the date of the order. As a condition for renewal, the petitioner was required to pay ₹20,000 as costs to the Adyar Cancer Institute, Chennai, within two weeks. If the petitioner faced technical difficulties in accessing the online renewal portal, the Registrar was instructed to accept a physical renewal application to ensure procedural fairness.
Law Point Settled by the Court
This ruling reinforces several key legal principles regarding trademark renewal. If a trademark remains on the register and no formal steps for its removal have been taken, the proprietor retains the right to seek renewal, even beyond the statutory period. The Trade Marks Registry has an obligation to actively remove expired marks. Failure to do so allows the proprietor to assert the right to renewal. The issuance of an expiry notice alone does not extinguish the proprietor’s right to renewal if the mark has not been struck off from the register. Courts possess discretionary authority to permit delayed renewal, albeit with conditions to ensure compliance with statutory timelines in the future.
Conclusion
This judgment underscores the significance of proactive regulatory action by the Trade Marks Registry. It also safeguards the rights of trademark proprietors by ensuring that procedural delays by the Registry do not unduly prejudice legitimate renewal claims. While reinforcing the importance of adhering to statutory deadlines, the Court has also recognized the necessity of judicial flexibility in cases where procedural lapses occur on the part of the authorities.
