Court holds that registration cannot be removed or renewal refused merely due to delay if the mark is still on the register and has not been formally removed under statutory provisions.
In a significant judgment delivered on October 1, 2026, the Madras High Court, presided over by Justice Dr. A.D. Maria Clete, ruled in favor of R. Booma Rani, the proprietor of the trade mark "THOTHA" used for safety matches, by directing the Registrar of Trade Marks to accept her delayed renewal application and renew her registration.
The case arose from the petitioner's inability to renew her trademark registration on the online portal of the Trade Marks Registry. The mark "THOTHA," registered in Class 34, had been applied for in 2007 but the registration certificate was issued only in 2023 after a prolonged opposition proceeding. Due to this delay, the first ten-year term of registration (2007-2017) had already expired by the time the certificate was issued. When the petitioner attempted to renew the mark online in 2025, the portal rejected the application citing a delay of more than one year.
The petitioner contended that she never received the registration certificate due to changed address details and lack of communication, which prevented her from applying for renewal within the prescribed six-month period after registration as per Rule 58(3) of the Trade Marks Rules, 2017. The Registry, however, claimed that the certificate had been sent by e-mail to the petitioner's counsel and that the petitioner failed to renew within the statutory timeline, thus the renewal could not be accepted.
Rejecting the Registry's contentions, the Court observed that the Trade Marks Act, 1999 and the Rules require the Registrar to remove a trademark from the register if renewal fees are not paid within six months of registration. However, in this case, no removal action had been taken, and the mark still appeared as "Registered" in the official register with only a warning that it was "likely to be removed." The Court emphasized that removal is a separate statutory step that must be carried out and advertised, and until such removal, no time bar operates against renewal.
The Court further held that the message on the online portal rejecting the renewal application due to delay is not an order under the Act and cannot be a ground to refuse renewal. The petitioner was entitled to file her renewal application either online or physically.
Additionally, the Court found that the Registry failed to prove that the certificate was served by e-mail to the petitioner or her counsel, since no e-mail address or dispatch records were produced, and the e-Register showed the e-mail field as blank. The Court noted that automated e-mailing of certificates applied only to trademarks published after 2015, whereas the petitioner's mark was published in 2008.
The Court directed the Registrar to accept the petitioner's renewal application within four weeks and process it in accordance with law. The renewal period was held to run from 20.02.2017 to 20.02.2027, with the petitioner also permitted to apply for the subsequent renewal due in 2027. The Court also allowed the petitioner to seek correction of a data-entry error where the mark was wrongly described as a "word mark" instead of a "label mark," and to update her address details.
This ruling reiterates the principle that procedural delays and technical glitches on online portals cannot override statutory rights under the Trade Marks Act. A registered proprietor retains the right to renew a trademark so long as it remains on the register and has not been formally removed. The judgment thus provides clarity and relief to trademark owners facing similar procedural hurdles.
Bottom Line:
Trade Marks - Where trade mark was registered only after first renewal had already fallen due and mark had not been removed from register, Registrar could not refuse to receive renewal application on ground of delay - Portal restriction was not an order under Act - Renewal application had to be accepted online or in physical form.
Statutory provision(s):
Trade Marks Act, 1999 Sections 23(2), 25(2); Trade Marks Rules, 2017 Rules 57(1), 58(3), 59, 60
R. Booma Rani v. Registrar of Trade Marks, (Madras) : Law Finder Doc Id # 2992075
