Registrar's Failure to Serve Renewal Notice at Updated Address for Service Renders Trademark Removal Invalid

The Petitioner applied for the trademark "B.P.R." in Class-07 in 1999

During opposition proceedings, the Petitioner updated his Agent's address via Form TM-48 in 2004, 2014, and 2018

The Trade Marks Registry consistently used this new address for hearing notices and even dispatched the Registration Certificate there in 2018

However, when the trademark's 10-year renewal was due in 2019, the Registry sent the mandatory Form RG-3 (O-3) notice to the Petitioner’s obsolete 1999 address. The notice was returned undelivered, and the mark was subsequently removed from the Register

The Petitioner discovered this in 2025 and sought a writ to allow renewal

The Respondent contended that the Petitioner failed to file the specific Form TM-16/TM-M required for a formal "change of address for service"

Section 25(3) of the Trade Marks Act, 1999, which mandates that the Registrar send a notice in the prescribed manner to the proprietor before removing a mark for non-renewal

Rule 58 of the Trade Marks Rules, 2017 regarding renewal procedures

The precedent in Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, which held that the statutory duty to notify under Section 25(3) is "sacrosanct" and its non-compliance renders the removal of a mark invalid

Charanjiv Kumar Taneja v. Registrar of Trade Marks, where the Delhi High Court condoned a 16-year delay in similar circumstances

The Court rejected the Respondent’s technical objection that the Petitioner did not file Form TM-M. It observed that the Registry had already accepted and utilized the new address for critical stages, including the dismissal of opposition and issuance of the Registration Certificate

The Court found it "unfathomable" that the Registry would revert to an old address specifically for the renewal notice after years of corresponding with the new one

Furthermore, the Registry failed to provide proof of service of the notice directly to the Petitioner's personal address; thus, "deemed service" could not be assumed

Applying the Coldsmiths principle, the Court held that since the mandate of Section 25(3) is on the Registrar and not the proprietor, the procedural failure of the Registry in sending the notice to an incorrect address invalidated the removal of the mark

The 6.5-year delay was condoned following established precedent given the gravity of the statutory non-compliance

The Court directed the Petitioner to file Form TM-R with prescribed fees and fines within 15 days. The Respondent was ordered to accept the form and process the renewal within eight weeks of receipt