Prakancha Metal Works Llp vs Union Of India & Anr.

$~O-37
* IN THE HIGH COURT OF DELHI AT NEW DELHI
# CNR No. DLHC010500892026
+ W.P.(C)-IPD 49/2026 & CM 274/2026
Date of Decision: 02.11.2026
IN THE MATTER OF:
PRAKANCHA METAL WORKS LLP
AN INDIAN LIMITED LIABILITY PARTNERSHIP FIRM
(FORMERLY KNOWN AS M/S. PRAKANSHA METAL WORKS
(P) LTD.
2A/393, AZAD NAGAR,
KANPUR,
UTTAR PRADESH- 208002
THROUGH ITS PARTNER
MR. PRATAP NARAYAN AGARWAL
.....PETITIONER
Through: Mr. M. K. Miglani with Mr. Utkarsh
Jha and Mr. Aman Bhola, Advocates.

versus

UNION OF INDIA
THROUGH DEPARTMENT OF PROMOTION
OF INDUSTRY AND INTERNAL TRADE
VANIJYA BHAWAN, 16-A,
AKBAR ROAD,
NEW DELHI - 110 001
.....RESPONDENT NO. 1

THE CONTROLLER GENERAL OF PATENTS,
DESIGNS, TRADE MARKS & GI
BOUDHIK SAMPADA BHAWAN,
S. M. ROAD, NEAR ANTOP HILL,
HEAD POST OFFICE,
MUMBAI-400 037.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 1 of 9

ALSO, AT:
REGISTRAR OF TRADE MARKS
BOUDHIK SAMPADA BHAWAN,
PLOT NO. 32, SECTOR 14,
DWARKA,
NEW DELHI- 110 075
.....RESPONDENT NO. 2
Through: Mr. Sumit Nagpal, SPC with Mr.
Tanmay Saini & Mr. Kunal Khurana,
Advocates.

CORAM:
HON’BLE MR. JUSTICE PURUSHAINDRA KUMAR KAURAV
JUDGEMENT

PURUSHAINDRA KUMAR KAURAV, J. (ORAL)
1. This petition seeks directions to the respondents to renew the
registration of the petitioner’s trademark “GINNI” in Class 21 under
Registration No. 1353877 and to permit the petitioner to file the requisite
renewal application and fees for the period of 2025-2035 within a reasonable
time prescribed by this Court.
2. On 15.10.2026, the Court, on hearing learned counsel appearing for
the petitioner, directed issuance of notice and required the learned counsel
for the respondents to take specific instructions as to the impediment, if any,
in accepting the petitioner’s application seeking renewal of the trademark.
3. Learned counsel appearing for the respondents, on instructions,
submits that bearing in mind the technical aspect of the matter and without
drawing any adverse inference against the respondents, the Court may
consider passing an appropriate order.
4. The petitioner has been using the mark “GINNI” since 1995 for
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 2 of 9

pressure cookers. In the year 2021, the petitioner changed its counsel on
record and had engaged a new attorney, namely, Mr. Yogesh Kumar Bali,
Advocate, in whose favour a fresh Power of Attorney dated 09.07.2021 was
executed. The said Power of Attorney was filed on record alongwith an
interlocutory petition in Form TM-M on 15.07.2021, which was duly
allowed, and the mark was renewed up to 28.04.2025. By the said Power of
Attorney, all previous authorisations, including the one in favour of the
previous attorney/counsel, M/s Puri & Puri (Advocates), were specifically
revoked.
5. The respondents generated the mandatory statutory notice under
Section 25(3) of the Trade Marks Act, 1999 [ the Act ] in Form RG-3 dated
09.01.2025, and claim to have dispatched it on 10.01.2025 to the petitioner’s
previous revoked attorney instead of the present attorney/advocate in whose
favour the Power of Attorney was filed in the year 2021 and was acted upon
by the respondents. The registration expired on 28.04.2025. The online
record of the respondents now carries an alert that the mark is likely to be
removed due to non-filing of the renewal request, and the online portal does
not permit the petitioner to file the renewal application on the ground of
delay of more than one year.
6. Even assuming that technically there was some non-compliance. Such
non-compliance, if any, is subject to appropriate rectification. Merely on
account of some technical reason, the petitioner ought not to suffer. It
remains undisputed that the petitioner’s attorney was changed and the new
attorney has not received the intimation. The petitioner bona fide believed
that sufficient compliance had been made and that the service would take
place on the new attorney.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 3 of 9

7. At this stage, it would be apposite to refer to Section 25(3) of the Act,
which reads as under:-
“ 25. Duration, renewal, removal and restoration of registration .—
*
(3) At the prescribed time before the expiration of the last registration of a
trade mark the Registrar shall send notice in the prescribed manner to the
registered proprietor of the date of expiration and the conditions as to
payment of fees and otherwise upon which a renewal of registration may
be obtained, and, if at the expiration of the time prescribed in that behalf
those conditions have not been duly complied with the Registrar may
remove the trade mark from the register:
Provided that the Registrar shall not remove the trade mark from the
register if an application is made in the prescribed form and the
prescribed fee and surcharge is paid within six months from the expiration
of the last registration of the trade mark and shall renew the registration
of the trade mark for a period of ten years under sub-section (2).
* ”
8. A bare perusal of the aforesaid provision shows that the obligation to
send the notice is cast upon the Registrar, and the notice has to be sent in the
prescribed manner to the registered proprietor. The manner is prescribed
under Rule 58(1) of the Trade Marks Rules, 2017 [ the Rules ], which
requires the Registrar to send the notice in Form RG-3 at the address of
service, informing the registered proprietor of the approaching date of
expiration and the conditions for renewal. It is only when those conditions
are not complied with that the Registrar “may” remove the mark from the
register.
9. Rule 19 of the Rules provides for authorisation of an agent in Form
TM-M. Sub-rule (2) thereof provides that service upon the agent of any
document relating to the proceeding or matter shall be deemed to be service
upon the person so authorising him. This deeming fiction, however, operates
only so long as the authority of the agent subsists. Once the proprietor has
revoked the authority of its earlier agent and the Registry has acted upon the
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 4 of 9

fresh authorisation, a notice sent to the erstwhile agent cannot be treated as
service upon the proprietor.
10. It is a settled principle of law that where a statute prescribes the
manner in which a particular act is to be done, it must be done in that
manner alone. The Supreme Court, time and again, has reiterated this
1
principle, which flows from the decision in Taylor v. Taylor and was
2
followed by the Privy Council in Nazir Ahmad v. King Emperor . The said
principle has consistently been followed and upheld by the Supreme Court
in a catena of decisions, such as Rao Shiv Bahadur Singh v. State of
3 4
Vindhya Pradesh , Deep Chand v. State of Rajasthan , State of U.P. v.
5
Singhara Singh and Babu Verghese & Ors. v. Bar Council of Kerala &
6
Ors. , and most recently in Gabbar Singh alias Devendra Pratap Singh
7
alias Rajesh Singh v. State of U.P. & Ors. , wherein it has been observed as
under:-
“11. We fall back upon the principle that when a particular thing is to be
done, it should be done in the manner stipulated; here statutorily
prescribed, or not at all. ...”
Since Section 25(3) of the Act requires the notice to be sent in the prescribed
manner, the requirement cannot be said to be met by sending the notice to a
person who had ceased to represent the petitioner.
11. The mandatory nature of the notice under Section 25(3) of the Act is
no longer res integra . Division Bench of our Court in Union of India &

1
(1875) 1 Ch D 426, 431.
2
1936 SCC OnLine PC 41.
3
AIR 1954 SC 322.
4
AIR 1961 SC 1527.
5
AIR 1964 SC 358.
6
(1999) 3 SCC 422.
7
2026 SCC OnLine 451.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 5 of 9

8
Ors. v. Malhotra Book Depot , while dealing with the analogous provision
under the Trade and Merchandise Marks Act, 1958, held that “ Section 25(3)
cannot be interpreted as permitting removal without the condition of
sending of notice being complied with. ” The same position has been
explained by another Division Bench of our Court in Charanjiv Kumar
9
Taneja Trading as Chirag Enterprises v. Registrar of Trade Marks , in the
following words:-
“ 9. Sub-section (3) of Section 25 places the Registrar under an obligation
to „send‟ a notice placing the registered proprietor on guard to take
appropriate steps for renewal of registration. The provision runs contrary
to any presumption operating against the registered proprietor and of it
being diligent in ensuring that the registration is renewed. While that is
not to say that a registered proprietor can assert indolence or inaction as
a matter of right, the provision appears to have been framed bearing in
mind the serious consequences which would ensue in case a trademark
lapses and thus places a positive obligation on the TMR to issue the O-3
notice notwithstanding the proprietor having failed to take steps for
renewal. The generation of a notice as opposed to one being actually sent
or dispatched cannot be viewed as being compliant with the statutory
obligations placed by Section 25(3). Quite apart from the imperative
language of Section 25(3), the stand as taken by the TMR would go against
the very grain of the meaning of a notice as generally understood and
which would entail the proprietor being informed of appropriate steps for
renewal of the trademark being initiated.
10. Of equal significance is the language of that provision and which
confers authority on the Registrar to remove the trademark if the
registered proprietor fails to comply with the conditions specified in that
notice. Section 25(3) uses the expression „may remove‟ which too is of
significance and negatives a presumption of removal being an inevitable
or ineluctable consequence of a failure to comply with the O-3 notice. ”
12. The question whether a notice sent to an agent whose authority stood
revoked satisfies Section 25(3) of the Act came up before this Court in

8
2013 SCC OnLine Del 828.
9
LPA 461/2023; Dated: 25.07.2023.

Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 6 of 9

10
Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks .
There too, the proprietor had filed a fresh authorisation revoking all earlier
authorisations, yet the RG-3 notices were sent to the erstwhile agent.
Rejecting the stand of the Registry, the Court held as under:-
“ 16. ... Section 25(3) of the Act actually contemplates issuance of such
notices to the proprietor of the trademark. Thus, if the respondent was of
the opinion that there is a doubt about the authorization of the agent
whose name is reflected in the records, it ought to have issued the RG-3
notices to the petitioner directly.
*
19. The fact that the notices contemplated under Section 25(3) of the Act
and RG-3 notices were issued to a person who, as on the date of issuance
of such notices, was not an authorized agent, keeping in view the facts
before this Court, cannot be said to be compliance of the statutory
mandate envisaged under the Act or the Rules framed thereunder.
20. ... As held above, the mandate is on the Registrar and not the
petitioner under Section 25(3) of the Act. ...”
11
13. Similarly, in Rajinder Singh v. Registrar of Trade Marks , the Trade
Marks Registry had been corresponding with the agent at his new address
but sent the RG-3 notice to the old address. The Court observed as under:-
“26…..Once the Trade Marks Registry, for all intents and purposes has
noted the fresh address of the Agent and has by its conduct of
corresponding, even to the extent of sending the Registration Certificate
of the petitioner, to the Agent on the new address, it does not lie in the
mouth of the respondent to now contend that the petitioner has not
complied with the prescribed Rules. ...”
14. The case of the petitioner is squarely covered by the aforesaid
decisions. The Power of Attorney dated 09.07.2021 not only revoked all
previous authorisations but also requested that all notices and
communications be sent to the new attorney at his address. The respondents
took it on record and acted upon it by allowing the interlocutory petition

10
W.P.(C)-IPD 37/2025; Dated: 17.02.2026.
11
W.P.(C)-IPD 4/2026; Dated 12.05.2026.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 7 of 9

filed through the new attorney and renewing the mark up to 28.04.2025.
Having done so, the respondents could not have sent the notice under
Section 25(3) of the Act to M/s Puri & Puri (Advocates), whose authority
had come to an end in the year 2021.
15. Even if there was any doubt about the authority of the agent shown in
its records, the respondents ought to have sent the notice to the petitioner
directly, as observed in Coldsmiths (supra). The Supreme Court in
12
Kusheshwar Prasad Singh v. State of Bihar & Ors. , has held that “ the
authorities cannot be allowed to take undue advantage of its own default in
failure to act in accordance with law ”. The respondents, thus, cannot rely
upon the expiry of the statutory period.
16. Insofar as the delay is concerned, the registration expired on
28.04.2025 and the petitioner approached this Court about seventeen months
thereafter. In Charanjiv Kumar Taneja (supra), the Division Bench held
that “ the subject of renewal of a trademark or its removal does not hinge
upon the principle of laches at all ”, and renewal was permitted even after
sixteen years. Further, as held in Malhotra Book Depot (supra), the outer
limit of one year under Section 25(4) of the Act cannot be put against a
proprietor where no valid notice preceded the removal.
17. In the present case, the mark has not even been removed, and the
online record of the respondents continues to show its status as
“Registered”. The purported delay, therefore, cannot defeat the claim of the
petitioner.
18. Bearing in mind the overall facts and circumstances, the Court finds
that the proposed removal of the mark without the compliance of Section
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 8 of 9

25(3) of the Act would not be countenanced, and accordingly, the decision
reflecting the likelihood of removal of the petitioner’s mark, as also the
refusal to permit its renewal, stands set aside.
19. The petitioner is permitted to file an application seeking renewal in
Form TM-R within a period of two weeks from today. The respondents shall
facilitate the petitioner in doing the same, including by enabling the filing of
the application on the online portal. Once the application is filed, let the
same be decided on merits without being influenced on account of the
purported delay. The petitioner shall pay the fees, as may be applicable.
20. With these observations, the petition stands disposed of. Pending
application also stands disposed of.


PURUSHAINDRA KUMAR KAURAV, J
NOVEMBER 2, 2026
tr/sa

12
(2007) 11 SCC 447.
Signature Not Verified
Signature Not Verified
Signed
By:PURUSHAINDRA
KUMAR KAURAV
Signed By:AMIT KUMAR
SHARMA
Signing Date:06.11.2026
16:32:47
W.P.(C)-IPD 49/2026 Page 9 of 9