Trademark renewal cannot be refused while the mark remains on the register, Madras High Court rules

The petitioner’s trade mark THOTHA (Hindi label), applied for in 2007, was registered on 7 February 2023 after opposition proceedings.

By then, the first ten-year registration period, calculated from the application date, had expired.

The petitioner learned of the registration in September 2025 and was unable to file a renewal application because the Registry’s portal rejected it as time-barred.

The Registry maintained that the mark should be removed for non-renewal, but acknowledged that it remained on the register and had not yet been removed.

The petitioner sought a direction permitting her to apply for renewal.

1. Whether the Registrar may refuse to receive a renewal application on the ground that the renewal period has expired when the mark was registered after its renewal date and has not been removed from the register.

2. Whether the petitioner’s renewal application could be considered despite the Registry’s assertion that the registration certificate had been issued and the renewal deadline had passed.

Section 23(2) of the Trade Marks Act, 1999 requires the Registrar, upon registration, to issue a certificate to the applicant.

Section 25 provides for ten-year registration terms, renewal, removal for non-renewal and restoration.

Rule 57(1) of the Trade Marks Rules, 2017 prescribes the earliest date for applying for renewal.

Under Rule 58(3), where registration occurs after the renewal date, renewal may be obtained by payment within six months of the actual registration date; if the fee is not paid, the Registrar shall remove the mark, subject to Rule 60.

Rule 59 requires removal to be advertised, while Rule 60 concerns restoration.

In Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks (2024:MHC:3109), the Madras High Court held that renewal may be sought while the mark remains on the register and directed the Registry to enable online filing or accept a physical application.

The Court also relied on P.G. Purushan v. The Registrar of Trade Marks, W.P.(IPD) No. 4 of 2026, and considered the Delhi High Court’s decision in Amrit Singh Mehta v. Controller General of Patents, Designs and Trade Marks (2026:DHC:6357).

The Court held that Rule 58(3) measures the six-month period from the actual date of registration, not from the applicant’s receipt of the certificate.

However, expiry of that period does not itself remove the mark: removal is a separate step that the Registrar must take.

As the mark remained registered and the Registry had not removed it, the Registrar could not refuse to accept the renewal fee; the portal’s rejection was not an order of removal under the Act.

The Registry also failed to establish that the certificate had been emailed: the e-Register showed no email address, no dispatch details were produced, and the applicable public notice did not cover this mark’s earlier journal publication.

The Court therefore applied Jaisuryas.

It clarified that it was not condoning delay or deciding that the renewal period runs from receipt of the certificate.

It directed the petitioner to file Form TM-R, with the prescribed fee and any applicable surcharge, within four weeks; the Registry must enable online filing or accept a physical application.

If the application is otherwise in order, the Registry must renew the mark for 20 February 2017 to 20 February 2027 within four weeks of receipt, and must not remove the mark in the meantime.

The petitioner may also apply for the renewal falling due on 20 February 2027.

The Registry must consider her requests to correct the mark’s classification as a word mark and to record her address change on their merits and in accordance with law.

No order as to costs was made.