Summary: The Delhi High Court recently clarified that merely dispatching a renewal notice may not be deemed as “service” if the trademark owner never receives it. The decision flags procedural lapses by the Trademark Registry, and grants brand owners protection against arbitrary removals due to postal delays or lost mail.
Introduction
Trademark law often works on a simple premise: if you want to keep your rights, you must actively maintain them. Renewing a trademark, therefore, gains particular significance, as it is a procedural step that is essential for keeping a mark alive.
Under Section 25 of the Trade Marks Act, 1999, a registered trademark enjoys protection for ten years and must be renewed thereafter. The default responsibility to renew lies with the proprietor of the trademark. But the law also requires the Registrar to notify the proprietor before the mark expires. This latter obligation is the subject matter of this note, for what happens when that notice never truly reaches the proprietor?
This question came up before the Delhi High Court in Rajinder Singh vs The Registrar of Trade Marks (W.P.(C)-IPD 4/2026, dated 12 May 2026). The answer appears to be that a missed renewal may not always be fatal, especially when the Registry itself falls short.
Background
The petitioner, Rajinder Singh, had been using the trademark “B.P.R.” since 1979 and applied for its registration in 1999, which was eventually registered in 2018, after a long drawn-out opposition was dismissed.
In the intervening years, the trademark agent’s corporate name and address for correspondence had changed multiple times. The updated address was duly updated through filings under Form TM-48 (Form for Authorisation of an Agent), and was consistently used by the Registry as well. Hearing notices, correspondence, the registration certificate and the earlier renewal confirmation were all sent to the new address.
But, for the 2019 renewal notice, the Registry reverted to the old address on record. The notice was returned undelivered with the remark “no such firm.” The petitioner remained unaware that his trademark was due for renewal. It stayed that way till 2025, when, upon appointing a new agent, the lapse came to light. By then, the system no longer permitted renewal.
The Registry’s stand
The Registry argued that while the petitioner may have indicated a new address in Form TM-48 filings, the “address for service” had not been formally updated through the prescribed form (formerly TM-16, now TM-M). Without this formal compliance, the Registry said it was bound to rely on the address recorded in its database. Since notices are auto-generated and sent to the address on record, its statutory obligations stood fulfilled.
The Court’s view
The Court, however, was not persuaded. It emphasized that the Registry itself had, for years, been corresponding with the petitioner at the updated address. In the circumstances, the Court found it “unfathomable” that this renewal notice alone was sent to the old address.
More importantly, the Court said that the requirement to issue a renewal notice (under Section 25(3)) is mandatory, and is a substantive safeguard. Failure to renew a trademark can lead to serious consequences, including loss of rights and potential third-party adoption. As a result, the obligation to notify the proprietor must be discharged meaningfully, not mechanically. Issuing a notice to an address that the Registry itself had long abandoned in practice could not amount to valid service compliance.
Separately, the Court noted that while a delay of over six years would ordinarily be fatal, where the Registry itself fails in its statutory duty, delay cannot be used as a ground to deny relief. A fresh renewal application was therefore allowed, with directions to the Registry to process the same.
Key takeaways
Clearly, statutory obligations cannot be presumed to be ‘merely procedural’, and are there for a reason. The Registrar’s specific duty to issue a renewal notice is particularly important because of its implications on the rights of trademark proprietors.
Equally, in practical terms, where the Registry has, by its own conduct, accepted and acted upon an updated address, it cannot later fall back on technical non-compliance to justify defective service.
At the same time, this decision is not an invitation for complacency. Trademark holders should track renewal deadlines proactively, ensure that address changes are properly and formally recorded through prescribed forms, and periodically review the status of their marks on the Registry portal.
English
Chinese (Simplified)
Japanese