The Registrar of Trade Marks must issue notices under Section 25(3) to the registered proprietor to ensure compliance before trademark removal; failure to do so enables renewal despite lapse.

JUDGMENT :

TUSHAR RAO GEDELA, J.

1. The present petition has been filed under Article 226 of the Constitution of India, 1950, seeking a direction restraining the respondent from removing the petitioner’s trademarks bearing registration nos.1214096, 1214098, 1214099, 1214100, 1214102, 1214103, 1214104 & 1214105 from the Register of Trade Marks on the ground of non-renewal of the registration. The petitioner also seeks a direction to the respondent to renew registration of the petitioner’s trademarks as mentioned above.

2. Briefly, facts as culled out from the petition and germane to decide the lis are as under :-

a. That on 14.07.2003, Nirula’s Corner House Private Limited (hereafter referred to as “the Assignor”), who was the Assignor and predecessor-in-interest of the petitioner, filed applications for registration of eight (8) trademarks under the Trade Marks Act, 1999 (hereafter referred to as “the Act”). Between 23.12.2005 and 29.03.2007, the trademark registration certificates were issued for the eight (8) trademarks on different dates.

b. The Assignor is stated to have filed Form TM-48 authorizing Mr. Sashidhar S. as an agent while revoking all the previous authorization issued by it on 11.05.2018. Pursuant thereto, upon the Assignor filing for renewal of the trademarks, the respondent issued letters confirming renewal of all trademarks and extending the validity till 14.07.2023.

c. In the interregnum, on 03.01.2018, the Assignor executed an assignment deed dated 03.01.2018 in favour of the petitioner, whereby the ownership of the trademarks was assigned to the petitioner. Following that, the Assignor executed a Power of Attorney dated 04.01.2018 and a Form for authorization of agent appointing one Mr. Munesh Kumar Gaur as the agent while revoking all the previous authorizations.

d. Consequent upon the aforesaid assignment deed, the Assignor, through the newly appointed authorized agent Mr. Munesh Kumar Gaur, filed Form TM-M alongwith the Power of Attorney with the respondent on 12.01.2018 informing that the communications with respect to, inter alia, the said trademarks, be sent to the agent. On the same day, the petitioner filed Form TM-P for each of the trademarks reflecting a change of ownership. It has been stated that the respondent also carried out the change of name in the column for proprietor in each of the said eight (8) trademarks. Petitioner stated that respondent alleges to have issued notices under Section 25 (3) of the Act for seven (7) of the eight (8) trademarks on 07.06.2023. However, the respondent appears to have not issued any notice in respect to the trademark "Pineapple Pop” in Class-30.

e. The validity period of the eight (8) registered trademarks is stated to have expired on 14.07.2023. However, the petitioner claims to have not received any information in regard to any such notice. It is claimed that even the authorized agent, Mr. Munesh Kumar Gaur, also did not receive any notice as contemplated under Section 25 (3) of the Act.

f. It is also claimed that it was only when the petitioner attempted to file Form TM-R in each of the trademarks seeking renewal, it was blocked by the online portal with the prompt “application cannot be renewed” (delay of more than one year)”. Aggrieved by the said rejection/refusal, the present petition under Article 226 of the Constitution of India, 1950 has been preferred.

3. Mr. Sanjeev Puri, learned Senior Counsel appearing for the petitioner submitted that the notice of assignment of the Assignor trans