Delhi HC Lets ‘GINNI’ Mark Seek Renewal After Registry Sent Expiry Notice to Attorney Whose Authority Was Revoked

The petitioner’s “GINNI” trademark, registered in Class 21 for pressure cookers, was due for renewal on 28 April 2025.

In 2021, the petitioner filed a fresh Power of Attorney appointing a new attorney and expressly revoking earlier authorisations; the Registry accepted the authorisation and renewed the mark up to 28 April 2025.

However, the statutory renewal notice was sent to the former attorney.

The online portal later indicated that the mark was likely to be removed and prevented the petitioner from filing a renewal application because more than one year had elapsed.

The petitioner approached the Court approximately seventeen months after expiry, seeking permission to apply for renewal.

Section 25(3) of the Trade Marks Act, 1999 requires the Registrar to send notice to the registered proprietor before expiry and permits removal only where the prescribed renewal conditions are not met; its proviso allows renewal upon payment of the prescribed fee and surcharge within six months of expiry.

Rule 58(1) of the Trade Marks Rules, 2017 prescribes service of the notice in Form RG-3 at the address for service.

Under Rule 19(2), service on an authorised agent is deemed service on the person who appointed the agent only while that authority subsists.

The statutory procedure must be followed in the prescribed manner.

In Union of India v. Malhotra Book Depot and Charanjiv Kumar Taneja v. Registrar of Trade Marks, the Delhi High Court held that actual sending of the notice is required and that removal is not an inevitable consequence of non-renewal.

Coldsmiths Retail Services Pvt. Ltd. v. Registrar of Trade Marks held that notice sent to a former agent does not satisfy Section 25(3), and that, where the agent’s authority is uncertain, notice should be sent directly to the proprietor.

Rajinder Singh v. Registrar of Trade Marks addressed the effect of the Registry’s knowledge of an updated agent address.

The Court also relied on the principle that an authority cannot take advantage of its own failure to act in accordance with law, as stated in Kusheshwar Prasad Singh v. State of Bihar.

The Registry had accepted and acted upon the 2021 Power of Attorney, which revoked the previous attorney’s authority and requested that communications be sent to the new attorney.

Sending the RG-3 notice to the former attorney therefore did not constitute service under Section 25(3); if the Registry doubted the agent’s authority, it could have notified the petitioner directly.

Because the statutory notice had not been validly sent, the Registry could not rely on the resulting non-renewal or the one-year period under Section 25(4) to defeat the petitioner’s application.

The mark also remained registered, and the Court held that the delay did not bar relief in these circumstances.

It allowed the petitioner two weeks to file a renewal application in Form TM-R, directed the respondents to facilitate filing through the online portal, and required the application to be decided on its merits without regard to the purported delay.

The petitioner was directed to pay the applicable fees; the petition and pending application were disposed of.