Section 25(3) Is Sacrosanct – Removal of a Trademark Cannot Rest on a Defective Notice: Delhi High Court

In a powerful reaffirmation of statutory discipline under the Trade Marks Act, 1999, the Delhi High Court has held that the Registrar cannot remove a registered trademark for non-renewal without strictly complying with the mandatory requirement of issuing notice under Section 25(3) to the registered proprietor.

Justice Tushar Rao Gedela allowed the writ petition and set aside the removal of eight trademarks. The Court ruled that issuance of renewal notices to an erstwhile agent, despite change of proprietorship and authorization being on record, does not amount to compliance with the statutory mandate.

The judgment underscores that removal of a trademark has “drastic consequences” and that the obligation cast upon the Registrar is not a mere procedural formality but a substantive statutory duty.

Assignment Recorded, But Notice Sent to Wrong Agent

The eight trademarks were originally registered in the name of Nirula’s Corner House Private Limited. Pursuant to an assignment deed dated 03.01.2018, ownership was transferred to Coldsmiths Retail Services Private Limited. On 12.01.2018, Form TM-P was filed for change of proprietorship, and the Registry duly updated the Register to reflect the petitioner as the new proprietor.

Simultaneously, Form TM-M along with a Power of Attorney was filed appointing a new authorized agent and revoking previous authorizations.

Despite this, when the renewal date approached in July 2023, the Registrar issued RG-3 notices to the erstwhile agent whose authorization had already been revoked. The petitioner claimed it never received any notice under Section 25(3). When it attempted to renew the marks, the online system blocked the applications on the ground that the delay exceeded one year.

The core legal issue before the Court was whether issuance of notice to a person who was no longer the authorized agent constituted valid compliance with Section 25(3) of the Trade Marks Act.

“The Provision of Section 25(3) of the Act Is Sacrosanct”

The Court answered the issue in clear and emphatic terms.

Justice Gedela observed that Section 25(3) mandates the Registrar “to send a notice in the prescribed manner to the registered proprietor intimating the date of expiration of the registered trademark.” The Court stressed that this mandate must be strictly followed because failure to renew, if caused by absence of notice, leads to serious civil consequences — including vulnerability of the mark to third-party adoption.

In a significant observation, the Court held that “the substratum of mandate engrafted in Section 25(3) upon the Registrar cannot be taken to be a mere procedural issue without any consequences. In other words, the provision of Section 25(3) of the Act is sacrosanct.”

Issuance of notice to an unauthorized person, even if such name continued on record due to administrative lapse, was held insufficient to satisfy the statutory requirement.

Registrar Cannot Take Advantage of Its Own Lapse

The Registrar argued that the change of agent was not effected because the prescribed fee of Rs.900/- for Form TM-M was not paid. The Court found this contention unsustainable.

It noted that once Form TM-M and the Power of Attorney were submitted, it was incumbent upon the Registry to intimate any defect such as non-payment of fee. The petitioner could not be faulted for the Registry’s failure to communicate such deficiency.

More importantly, the Court held that even if the Registry doubted the status of the authorized agent, it ought to have issued the notice directly to the registered proprietor whose name had already been updated in the Register.

The failure to do so rendered the removal action legally infirm.

“May Remove” – Removal Is Not Automatic

The Court relied upon the Division Bench judgment in Charanjiv Kumar Taneja v. Registrar of Trade Marks, which interpreted Section 25(3) and emphasized that the Registrar’s obligation to send notice is mandatory.

Quoting the Division Bench, the Court reiterated that Section 25(3) uses the expression “may remove,” which “negatives a presumption of removal being an inevitable or ineluctable consequence.” Removal is not automatic upon expiry; it follows only after valid notice and non-compliance.

The Court further reinforced that “the generation of a notice as opposed to one being actually sent or dispatched cannot be viewed as being compliant with the statutory obligations.”

Delay and Laches No Bar Where Notice Itself Is Defective

The respondent strongly pressed the argument that the petitioner had approached the Court after 1½ to 2 years from the date of expiry and had failed to renew within the statutory window.

The Court rejected this plea, holding that where the mandatory notice under Section 25(3) was not validly issued, the doctrine of laches cannot defeat the proprietor’s statutory protection.

Relying again on Charanjiv Kumar Taneja, where renewal was permitted even after sixteen years in absence of valid notice, the Court held that renewal disputes “do not hinge upon the principle of laches at all” when the Registrar has failed in its statutory obligation.

Final Directions – Renewal Restored

Allowing the writ petition, the Court set aside the removal of all eight trademarks. The petitioner was permitted to file fresh Form TM-R with prescribed fee and fine within ten days, and the Registrar was directed to process the renewal applications within eight weeks.

The judgment sends a clear message to the Trade Marks Registry: statutory safeguards under Section 25(3) are not ornamental formalities. Before removing a registered trademark — a valuable intellectual property right — strict compliance with the mandate to notify the registered proprietor is indispensable.

Date of Decision: 17/02/2026