Rajinder Singh vs The Registrar Of Trade Marks
- Court
- Delhi High Court
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 05.05.2026
Judgment delivered on: 12.05.2026
W.P.(C)-IPD 4/2026
RAJINDER SINGH .....Petitioner
versus
THE REGISTRAR OF TRADE MARKS .....Respondent
Advocates who appeared in this case:
For the Petitioner: Mr. Mohammad Bilal, Mr. Rahul Kumar and Ms.
Akanksha Singh, Advocates.
For the Respondent: Ms. Nidhi Raman, CGSC with Mr. Om Ram and
Ms. Nikita Singh, Advocates.
CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
J U D G E M E N T
TUSHAR RAO GEDELA, J.
1. By way of the present writ petition under Article 226 of the
Constitution of India, 1950, the petitioner seeks the following prayers:-
“A. That appropriate writ, direction and/or order be issued to the
Respondent to allow the Petitioner to renew the registration of their
trademark registration application bearing no.- 870775 in Class-07;
and/or
B. That appropriate writ, direction and/or order be issued to the
Respondent directing them to deem the period of validity of registration
of a trademark from the date of their actual registration; and/or
C. That appropriate writ, direction and/or order be issued declaring that
the relevant provisions of Rule 58(2) and 58(3) of The Trade Marks
Rules, 2017 are ultra vires to The Trade Marks Act, 1999 and are
unconstitutional; and/or
D. That appropriate writ, direction and/or order be issued declaring that
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a registered trademark which is not removed from the trademarks
register be allowed to seek discretion of The Registrar of Trade Marks
for its renewal if it has crossed the period of 6-months from the date of
expiry of its registration; and/or
E. That the costs of the present proceedings be awarded in favour of the
Petitioners and as against the Respondent; and/or
F. That any other/further orders, writ or direction, as deemed fit and
proper by this Hon’ble Court, be passed in favour of the Petitioner
and/or as against the Respondent.”
2. Petitioner claims to have first adopted and started using the trademark
“B.P.R.” on 01.04.1979 in respect of “Electric Motors, Grinders, Polishers,
Mono Block Pump Sets, Air Compressors, A.C. Generators, Submersible
Pump Sets, etc.”. On 11.08.1999, he submitted a trademark registration
application bearing no.870775 in Class-7 for the mark “B.P.R.” (word mark
per se ).
3. The said application was objected to by the Registrar of Trade Marks
which was conveyed to the petitioner vide communication dated 28.01.2002.
The Trademark Agent of the petitioner submitted the reply to the
objection/examination report alongwith its address for communication on
15.03.2002. The said trademark application was accepted by the Registrar and
published in the Trade Marks Journal ‘MEGA-I’ on 25.08.2003. It is pertinent
to mention that the Agent who filed the said trademark application was ‘Super
Trade Mark Co.’, with its address at 14, State Bank Nagar, Paschim Vihar,
New Delhi-110063 (hereinafter referred to as the ‘old address’ ).
4. Subsequently, on 02.01.2004, a notice of opposition was filed by M/s.
Phillips Brake Rubber Company, which was served upon the petitioner on
05.05.2004. Pursuant thereto, a counter statement was filed by the petitioner
on 01.07.2004. Along with it, the Agent of the petitioner filed a fresh Power
of Attorney dated 22.06.2004 in Form TM-48 in which the new address of the
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Agent (Super Trade Mark Co.) i.e., 159-E, Kamla Nagar, Delhi-110007
(hereinafter referred to as the ‘new address’ ) was mentioned as the address for
communication to the petitioner.
5. It is stated that the opponent, vide communication dated 21.02.2005,
informed the Registrar that they wish to rely on the notice of opposition and
not adduce any evidence, which was served on the new address of the Agent
of the petitioner.
6. During the pendency of the proceedings before the Trade Marks
Registry, a fresh Power of Attorney dated 25.09.2014 in Form TM-48 was
filed by the Agent of the petitioner to intimate about the change of legal name
of his Agent i.e., Concept Legal, E-159, Kamla Nagar, Delhi-110007, to the
Trade Marks Registry, vide communication dated 25.09.2014. It is stated that
the sole purpose of filing the new Power of Attorney was to change the name
of the Agent of the petitioner from ‘Super Trade Mark Co.’ to ‘Concept
Legal’ owing to the change in its legal name.
7. Following this, the Hearing Notice dated 05.09.2015 was issued by the
Registrar of Trade Marks and sent to the Agent of the petitioner on the new
address. Subsequent Hearing Notices dated 15.10.2015, 22.08.2017 and
14.12.2017 were also sent and served to the new address of the Agent of the
petitioner.
8. It is stated that the final hearing on the opposition was taken up on
23.02.2018 and on account of no one having appeared for the opponent, the
said opposition was dismissed under Rule 50(4) of the Trade Mark Rules,
2017 and the petitioner’s Trademark Application bearing no.870775 was
ordered to be registered. Pursuant thereto, on 27.05.2018, the Registration
Certificate bearing no.1873833 for the trademark “B.P.R” was issued in
favour of the petitioner.
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9. Subsequently, on 24.09.2018, an application for renewal of the
trademark registration (in Form TM-R) was filed by the petitioner. Alongwith
it, a fresh Power of Attorney dated 22.09.2018 was also filed (in Form TM-
48) giving details of the name and changed address of the Agent of the
petitioner i.e., Concept Legal, Office No.221, Vardhaman City Center, Plot
No.3, LSC, Gulabi Bagh-Shakti Nagar Railway under Bridge, Delhi-110052.
However, it is stated that the address i.e, E-159, Kamla Nagar, Delhi-110007
was also mentioned in the said Form. On 28.09.2018, the Registrar of Trade
Marks issued a letter to the effect that the Trademark Application bearing
no.870775 of the petitioner has been renewed for ten years from 11.08.2009
and that the said renewal had been published in Trade Marks Journal no.1870.
This communication is also stated to have been sent and delivered to the
Agent of the petitioner at its new address of communication i.e., Concept
Legal, 159E, Kamla Nagar, New Delhi-110007.
10. It is stated by the petitioner that as per the online records maintained by
the Trade Mark Registry, a notice under Form RG-3 (O-3) was issued by the
Registrar of Trade Marks intimating that the trademark registration is due for
renewal and is to expire on 11.08.2019. It is alleged that the said RG-3 (O-3)
notice was sent to the Agent of the petitioner at their old and first address i.e.,
Super Trade Mark Co., 14, State Bank Nagar, Paschim Vihar, New Delhi-
110063, vide correspondence no.8272025 dated 16.05.2019 and was
dispatched through dispatch no.406934L dated 17.05.2019.
11. It is stated that the online records of the Trade Mark Registry also
discloses that the RG-3/O3 notice which was sent to the old Agent of the
petitioner at the old address was returned due to reason, “no such firm” , and
was received back by the Registrar of Trade Marks on 29.05.2019.
12. Petitioner claims that in the interregnum, the petitioner was unaware of
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any intimation by the Trade Mark Registry under the provisions of Section 25
of the Trade Marks Act, 1999 either to the petitioner or to its Agent. Petitioner
states that on 15.12.2025, he changed the Agent and executed a new Power of
Attorney in favor of ‘Blue Inkk’ at Goel Niwas, J-62, Street No.4, Laxmi
Nagar, Delhi-110092. It is further stated that the new Agent of the petitioner
discovered that the application of the petitioner is pending for renewal and a
notice under Form RG-3 has already been sent, although, to the previous
Agent of the petitioner on the old address which has been returned.
13. It is stated that the new Agent of the petitioner attempted to file Form
TM-R for renewal of the Trademark Application no.870775, however, was
not permitted to file by the online e-comprehensive filing system,
constraining the petitioner to file the present writ petition.
14. On 03.02.2026, when the matter was taken up for hearing, learned
counsel appearing for the petitioner submitted that Prayers C. & D.
challenging Rules 58(2) and 58(3) of the Trade Marks Rules, 2017 as ultra
vires to the Trade Marks Act, 1999, is not pressed in the present petition and
sought liberty to challenge the vires of these Rules in an appropriate petition,
which was granted by this Court.
15. Pursuant to the order dated 18.02.2026, the respondent had filed its
short affidavit stating inter alia as under:-
“2. That, following are the issues for consideration in the present
matter:
I. Whether, without filing the prescribed Form (erstwhile Form
TM-16) for “change of the address for service”, O-3 notices
could have been served to the Petitioner’s new address?
II. Whether Form TM-48 (for Power of Attorney/Authorization
of Agent) instead of Form TM-16, can be treated as an
appropriate form to “change of the address for service” in the
records of the Trademarks Registry for all the purposes,
including for serving the O-3 notice?
3. It is submitted that at the time of filing of the subject Trademark
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By:YASHRAJ
Signing Date:12.05.2026
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Application No. 870775, Petitioner gave the address for service as
'Super Trade Mark Co., 14, State Bank Nagar, Paschim Vihar, New
Delhi - 110063’ (“first 1 address for service”). Copy of the Petitioner’s
Form TM- 1 showing the first address for service is annexed herewith as
Annexure - A.
4. Thereafter, the Petitioner on 16.04.2003 filed Form - 48, wherein
the Petitioner mentioned its address as ‘Super Trade Mark Co., I59-E,
Kamla Nagar, Delhi - 100007’ (“second address”). It is submitted that
Form TM - 48 is only for “authorization of the agent” which simply
means that some other agent has been authorized on the Petitioner’s
behalf. Copy of the Petitioner’s Form TM -48 is annexed herewith as
Annexure - B.
5. It is submitted that Form TM-16 (now Form TM-M) with the
prescribed fee was the appropriate form for change of address for
service, which has never been filed by the Petitioner till date, due to
which the address for service in the database of the Trademarks Registry
as of date reflects the first address for service i.e. ‘Super Trade Mark
Co., 14, State Bank Nagar, Paschim Vihar, New Delhi - 110063’. Copy
of the latest Status Page reflecting the first address for service is annexed
herewith as Annexure - C.
6. It is submitted that Form TM-48 cannot be constituted as a
substitute of Form TM-16 for change in the address for service. Copy of
sample Form TM - 16 is annexed herewith as Annexure - D.
7. Even assuming that certain communications in earlier proceedings
were sent at a different address (which were manually done), the same
does not dispense with compliance under the Act by the
applicant/registered proprietor for change of address for service in the
manner prescribed by law, nor the timelines under Section 25 of the Act.
8. Mere mention of an address in the correspondence, pleadings or
agency documents filed in opposition proceedings cannot be treated as
conclusive proof that a formal statutory request to amend the address for
service for all future purposes stood validly and duly recorded in the
register/system. Registry cannot treat every filing bearing a
letterhead/address as a formal statutory request for change of address
for service.
9. It is to be considered that the RG-3/O3 notices are not being sent
manually. The RG-3/O3 notices are computer generated and are sent
automatically on the address which is recorded in the database of the
Trademarks Registry. Unless the Applicant files the appropriate Form
TM-16, the address for service could not have been changed. It is
because of this reason that the RG-3/O3 notice might have been sent to
the old address.
10. It is pertinent to note that the details of returned/non-delivered
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By:YASHRAJ
Signing Date:12.05.2026
16:57:38
RG-3/O3 notice in the present case was uploaded on the Trademarks
Registry’s database on 29.05.2019, which is also reflected and was
available online for the Petitioner to access. Copy of the online status
showing that the details of returned/non-delivered RG-3/O3 notice in the
present case was uploaded on the Trademarks Registry’s database on
29.05.2019 is annexed herewith as Annexure - E.
11. It is submitted that since 29.05.2019 to 15.12.2025, the Petitioner
had neither taken any steps whatsoever to get the address for service
changed/amended in the records of the Trademarks Registry, nor has it
filed any request for renewal when it was aware that its mark was valid
only till 11.08.2019 (refer Document - 20 @ Pg. 144 of the Petition). The
Petitioner cannot shift the burden of its own procedural non-compliance
upon the Trademarks Registry.
12. The Petitioner herein has given in total 4 addresses along with
different forms and applications:
S.
No
.
Address Communicated
by filing
Consequence Relevant
st
1 Super Trade Mark
Co.,
14, State Bank Vihar,
Paschim Vihar,
New Delhi-110063.
Form TM-1
Filed on
11.08.1999
At the time of
filing, the said
address was
considered and
recorded as the
address for
service in the
database of the
Trademarks
Registry.
Petitioner
Form TM-1
@
Annexure-A
of this
Affidavit
nd
2 Super Trade Mark
Col,
159-E, Kamla Nagar,
Delhi – 110007.
Reply to the
Examination
Report dated
15.03.2002
It was not the
appropriate
way to change
the address for
service
Doc-6 @
Pg.86 of the
Petition
Form TM – 48
on 16.04.2003
It was not the
appropriate
form to change
the address for
service. Hence,
the address for
service was not
changed.
Petitioner’s
Form TM-
48 @
Annexure-B
of this
Affidavit
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By:YASHRAJ
Signing Date:12.05.2026
16:57:38
Petitioner’s
Counter
Statement filed
on 01.07.2004
along with Form
TM-48
It was not the
appropriate e
way to change
the address for
service. Hence,
the address for
service was not
changed.
Doc – 9 @
Pg. 96 – 99
of the
Petition
Evidence in
support of the
Application filed
on 17.04.2005
It was not the
appropriate
way to change
the address for
service. Hence,
the address for
service was not
changed.
Pg. 126 of
the Petition
rd
3 Concept Legal,
Form TM-48
filed on
24.09.2014
It was not the
appropriate
form to change
the address
for service.
Hence, the
address for
service was not
changed.
Doc - 14@
Pg. 128-
129
of the
Petition
Advocates and
Solicitors, Patent and
Trademark Attorneys,
E-159, Kamla Nagar,
Delhi- 110007.
th
4 Concept Legal, Office
No.221, Vardhman
City Center, Plot No.3,
LSC, Gulabi Bagh –
Shakti Nagar Railway
under Bridge, Delhi-
110052.
Form TM- R
filed on
24.09.2018
It was not the
appropriate
form to change
the address
for service.
Hence, the
address for
service was not
changed.
Doc-19 @
Pg. 141 -
143
13. It is to be noted that all these addresses have been informed to the
Registry by not filing the appropriate Form (TM-16) but by filing other
documents including Form TM-48, Counter-statement in opposition
proceedings, evidence in opposition proceedings, etc. The table above
explains how the communication of “new address” has been done by the
Petitioner. It is submitted that the Respondent without any formal request
from the petitioner can not change the address for service in the record.
14. Therefore, the Petitioner itself has not complied with the statutory
requirement by not filing the appropriate Form (TM-16).
15. In view of the aforementioned facts, circumstances, it is most
respectfully prayed that the present Writ Petition may be dismissed by this
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Digitally Signed
By:YASHRAJ
Signing Date:12.05.2026
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Hon’ble Court.”
16. Having heard Mr. Bilal, learned counsel for the petitioner and Ms.
Nidhi Raman, learned CGSC for the respondent and having examined the
material on record, this Court is inclined to allow the present petition.
17. It is relevant to note that the objection raised by the respondent is in
respect of non-updation of the records, on account of the petitioner having
failed to file Form TM-16 (now Form TM-M) which was the appropriate way
to update the Registry Records of the change of address of service in the
manner prescribed by the Trade Marks Rules, 2002.
18. The contention of the respondent was that Rules 17 and 18 of the Trade
Marks Rules, 2017 prescribe the change of address for communication/service
and Rule 19 prescribes Form TM-M for the change of the trademark
agent/agency, to be communicated to the Trade Marks Registry. If such Form
is not filled or submitted by the individual, there lies no obligation on the
Trade Marks Registry to effect any such change. It was stated that mere
communication of the change in the name and address of the Agent, without
the appropriate Form being filed, is not sufficient as there are hundreds of
communications received by the Trade Marks Registry everyday and it would
be well nigh impossible to sift and update the records. It is emphasized that it
is precisely for this reason that various Forms are engrafted and prescribed
under the Rules.
19. It was further contended that the RG-3/O-3 Notice was not only tried to
be served upon the Agent but also the petitioner at the address available with
the Trade Marks Registry which is the same as mentioned in the memo of
parties to the present petition too. It was submitted that the Notice sent to the
petitioner himself was on the only and correct address of the petitioner. It was
contended that once the address is correct and the notice has been dispatched
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By:YASHRAJ
Signing Date:12.05.2026
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to the correct address, service is deemed to have been effected. Thus,
according to the respondent, once the Notice has been served upon the
petitioner or his Agent, the mandate under Section 25(3) of the Act stands
complied with. In such circumstances, if the petitioner does not take
appropriate steps within time to renew his trademark, the Registrar of Trade
Marks is under legal obligation to remove the said trademark from the records
of the Trade Marks Register.
20. What is relevant to be considered is that while the opposition
proceedings were pending, the petitioner had changed its Agent and the
change in name and address of the Agent was furnished to the Trade Marks
Registry vide communication dated 01.07.2004. It is significant to note that
the communications thereafter emanating from the Trade Marks Registry
were in fact curiously issued to the Agent at the new address, i.e., 159-E,
Kamla Nagar, Delhi-110007. This is not disputed at all.
21. Further communications were also addressed to the new address of the
Agent by the Trade Marks Registry. In fact, the petitioner asserts that the
opponent also sent its communications to the said new address of the
petitioner’s Agent.
22. In the interregnum, due to non-appearance of the opponent in the
opposition proceedings, the said opposition was dismissed under Rule 50(4)
of the Trade Marks Rules, 2017 and the petitioner’s Trademark Application
bearing no.870775 was ordered to be registered. Subsequently, upon an
application made by the petitioner in Form TM-R, the Registrar of Trade
Marks, on 28.09.2018, renewed the Trademark Application bearing
no.870775 of the petitioner for ten years from 11.08.2009. Thus, the mark of
the petitioner was registered and continued to remain on the Register of Trade
Marks.
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Digitally Signed
By:YASHRAJ
Signing Date:12.05.2026
16:57:38
23. While things stood thus, it is pertinent to note that strangely, when it
came to issuance of notice of renewal of trademark of the petitioner, the Trade
Marks Registry sent the said RG-3/O3 Notice, on 16.05.2019, to the Agent of
the petitioner at the old address, i.e., 14, State Bank Nagar, Paschim Vihar,
New Delhi-110063. Though it was contended that the said RG-3/O3 Notice
was also sent to the petitioner at his own address i.e., BE-345A, Street No.2,
Hari Nagar, New Delhi-110064, which was correctly available in the records
of the Trade Marks Registry, however, the petitioner denied receiving any
such notice. No proof of delivery etc., has been placed on record by the
respondent. In such circumstances, it would be difficult for this Court to
assume deemed service upon the petitioner, even if it were to be believed that
the same was indeed also sent to the petitioner at his address as available in
the records of the Trade Marks Registry.
24. Another relevant and significant aspect of the case is that the Hearing
Notices dated 05.09.2015, 15.10.2015, 22.08.2017 and 14.12.2017 during the
opposition proceedings were all along and continuously being issued and sent
to the new address i.e., 159-E, Kamla Nagar, Delhi-110007. So much so, that
even the Registration Certificate dated 28.09.2018 granting renewal of the
registration of trademark of the petitioner from 11.08.2009 for 10 years, was
also sent to the said new address.
25. In such circumstances and facts detailed above, it is unfathomable as to
why the Trade Marks Registry would issue Form RG-3/O3 Notice to the old
address of the erstwhile Agent.
26. Additionally, it is significant to note that the arguments raised on behalf
of the respondent that the petitioner has not complied with the Rules which
prescribed specific Forms for recording the change in the name and addresses
of the Agent is concerned, the same is belied by the undeniable facts noted
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By:YASHRAJ
Signing Date:12.05.2026
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above. 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.
Thus, the said argument is rejected.
27. That apart, the relevance and criticality of service of notice of renewal
under Section 25(3) of the Act has been considered by this Court in
Coldsmiths Retail Services Private Limited vs. Registrar of Trade Marks,
W.P.(C)-IPD 37/2025, decision dated 17.02.2026. The relevant portions are
extracted hereunder:-
“18. The Legislature, while engrafting sub-section (3) of Section 25 of
the Act mandated the Registrar to send a notice in the prescribed manner
to the registered proprietor intimating the date of expiration of the
registered trademark and stipulating conditions as to payment of fees etc.
Having regard to the fact that the mandate of issuance of such notices
is placed upon the Registrar, it was incumbent upon the Registrar to
satisfy itself not only of the issuance of such notices either to the
registered proprietor or its authorized agent, but also be vigilant as to
whether any change of authorization has duly been informed under the
Statute to the Registry. It is also significant to bear in mind that the
non-renewal due to lapse of intimation of the information contemplated
under Section 25(3) of the Act would result in a drastic consequence to
the registration of the trademarks, inasmuch as the said registration of
a particular mark would lapse, making such trademark susceptible to
be adopted by a third party. This may lead to unnecessary and easily
avoidable litigation. Thus, the substratum of mandate engrafted in
Section 25(3) upon the Registrar cannot be taken to be a mere
procedural issue without any consequences. In other words, the
provision of Section 25(3) of the Act is sacrosanct. Similar would be the
prescription as to why Rule 58(1) of the Trade Marks Rules, 2017 was
framed.
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.
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Digitally Signed
By:YASHRAJ
Signing Date:12.05.2026
16:57:38
20. The contention of the respondent that the petitioner too could have
approached the Trade Marks Registry for renewal of its registrations
before the expiry or before the date of expiry or before the expiry of six
months thereof, is unsustainable in law. As held above, the mandate is on
the Registrar and not the petitioner under Section 25(3) of the Act. Thus,
this contention is unpersuasive and unmerited.”
[Emphasis supplied]
28. It is critical to note that this Court, in Coldsmiths (supra), condoned the
delay of 1.5-2 years in preferring the writ petition. That was based on the
judgement of the learned Division Bench in Charanjiv Kumar Taneja
Trading as Chirag Enterprises vs. Registrar of Trade Marks, LPA 461/2023,
decision dated 25.07.2023, where, in similar circumstances, a delay of 16
years was condoned.
29. Thus, the delay of 6.5 years in filing the present petition in view of the
above circumstances may not be hit by delay and laches.
30. Thus, in view of the above, the contentions of the petitioner are
accepted.
31. Resultantly, the petitioner is permitted to file afresh the Form TM-R in
respect of the trademark registered in his name on deposit of the prescribed
fee and any amount payable as fine prescribed by the Rules within 15 days
from date. The respondent shall accept such Form TM-R by the petitioner, if
submitted within the time prescribed above, and process the same in
accordance with the Rules. The said exercise will be carried out within eight
(8) weeks from the date of receipt of the said Form from the petitioner.
32. The writ petition is allowed in above terms and disposed of with all
pending applications.
TUSHAR RAO GEDELA
(JUDGE)
MAY 12, 2026/ rl
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Digitally Signed
By:YASHRAJ
Signing Date:12.05.2026
16:57:38