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IN THE HIGH COURT OF JUDICATURE AT MADRAS
SENTHILKUMAR RAMAMOORTHY, J.
Jaisuryas Retail Ventures Pvt. Ltd., rep. By its Director Mr. Rajendra Kamath - Petitioner
Versus
The Registrar of Trade Marks, The office of the Trade Marks Registry, Intellectual Property Office Building G.S.T. Road, Guindy, Chennai-600 032 - Respondent
W.P.(IPD) Nos.4 to 14 of 2024 (11 WPs)
Decided On : 13-08-2024
Trademark - Renewal Applications - Trade Marks Act, 1999 - Sections 25(1), 25(2), 25(3), 25(4) - The court interpreted the statutory obligations of the Registrar regarding notice issuance for trademark renewal, emphasizing the registered proprietor's rights to renew trademarks as long as they remain on the register.
Fact of the Case:
The petitioner, having acquired trademarks through assignment, sought permission to file renewal applications for several trademarks that were not removed from the register despite the registered proprietor's failure to receive a renewal notice from the Registrar.
Finding of the Court:
The court found that the Registrar failed to issue the required notice to the registered proprietor, allowing the petitioner to apply for renewal despite not being the registered proprietor at the time.
Issues: Whether the petitioner can file for renewal of trademarks despite not being the registered proprietor and the Registrar's failure to issue a notice prior to expiration.
Ratio Decidendi: The court held that the failure of the Registrar to issue a notice under Section 25(3) allows the registered proprietor or their assignee to apply for renewal as long as the trademarks remain on the register.
Result: The petitioner is permitted to apply for registration of assignment and subsequently for renewal of the trademarks.
ORDER :
(Senthilkumar Ramamoorthy, J.) :
(Prayer in W.P.(IPD) No.4 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2355816 in class 35 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.5 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388120 in class 30 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.6 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388121 in class 29 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.7 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388122 in class 43 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.8 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388118 in class 32 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.9 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2355818 in class 32 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.10 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388119 in class 31 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.11 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2355819 in class 31 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.12 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388817 in class 43 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.13 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2355820 in class 29 and renew the same in accordance with due process of law.
Prayer in W.P.(IPD) No.14 of 2024: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Mandamus directing the Respondents to permit the Petitioner to file renewal application for renewing the trade mark registered under number 2388117 in class 35 and renew the same in accordance with due process of law.)
In each writ petition, the petitioner seeks a direction to the respondent to permit the filing of a renewal application in respect of the registered trade mark forming the subject of the respective petition.
2. Mr.N.Shivaji Siddarth is the register
The central legal point established in the judgment is the interpretation of Section 25(3) of the Trade Marks Act, emphasizing the mandatory nature of the renewal notice and the entitlement of the pe....
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.
The main legal point established in the judgment is the importance of justifying undue delay in seeking renewal of a trademark and the necessity of compliance with statutory provisions.
The central legal point established in the judgment is that the rejection of a renewal request should be justified, considering the communication of registration certificate and renewal notice, as pe....
The court directed the Registrar to correct the status of the expired trade mark on the website of the Registrar of Trade Marks.
The main legal point established in the judgment is the importance of exhausting alternative remedies provided by the Trade Marks Act before seeking relief under Article 226 of the Constitution of In....
Section 20 of Trade Marks Act, 1999 provides for advertisement of an application, either after acceptance or before acceptance, so as to afford an opportunity to the public, to oppose the registratio....
The main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectific....
The trial court must assess only the prima facie tenability of claims regarding trademark validity under Section 124, without delving into the merits of those claims.
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