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IP Case Digest · Trade Marks Act s.25(3)

Section 25(3), Trade Marks Act: case law

4 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Trade Marks Act s.25(3), from 2024–2026, each with a headnote by BRB Legal.

4judgments
3courts
2024–2026years

Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, CM 162/2025 & CM 164/2025

Delhi High Court · Rectification allowed

Eight registrations saved from removal for non-renewal. The Court held that section 25(3) places a positive obligation on the Registry to issue the O-3 notice even where the proprietor has failed to take steps for renewal, and that generating a notice is not the same as sending or dispatching it: generation alone does not discharge the statutory obligation. It also read the words "may remove" in section 25(3) as negativing any presumption that removal is an inevitable consequence of failing to comply with an O-3 notice. Following Charanjiv Kumar, delay did not bar relief, that Division Bench having permitted renewal after sixteen years where no valid notice had issued.

BETCO Enterprises v. Office of the Controller General of Patents, Designs & Trade Marks & Anr., W.P. No.15517 of 2021

Madras High Court · Allowed

Renewal application refused as out of time where the mark had been applied for in 1997, advertised in 2006, opposed, and only registered in 2019 after the opposition was rejected, by which time the renewal window measured from the application date had long passed. The Registry argued that section 25(3) could not apply because registration post-dated the renewal date. The Court held the objection fallacious: the statute requires the Registrar to intimate the proprietor under section 25(3) read with Rule 58 when the term is about to expire, and if the Registry's position is that the proprietor should have applied for renewal on grant, then the Registrar should have told him so when issuing the certificate, since the registration dates back to the application. The proprietor could not be faulted for a delay in registration caused by a third party's opposition.

M/s. V.A. Mishra & Sons v. The Registrar of Trademarks, W.P.(IPD) No. 16 of 2024

Madras High Court · Allowed

Section 25(3) requires the Registrar to send notice of the date of expiration of the registration and of the conditions on which it may be renewed. No such notice was issued here, and the Registry's counsel could place no material to show that one had been sent, so a mandamus went to accept a renewal request filed years after the date the Registry's own website showed.

Motwane Private Ltd. v. The Registrar of Trade Marks & Union of India, Writ Petition (L) No. 30537 of 2023

Bombay High Court · Rectification allowed

Marks unrenewed since 1983 but never removed from the register, and replies under the Right to Information confirming that no removal notice had ever issued. The Division Bench held that section 25(3) makes it mandatory for the Registrar to give notice before expiry, telling the proprietor the date of expiration and the conditions for renewal, and only on non-compliance with that notice may the mark be removed. Where there is a two-way lapse, the proprietor not applying and the Registrar not issuing notice, the mark remains on the register and the right to seek renewal subsists. Section 25(3) cannot be read to mean that the right of renewal is extinguished or lost merely because no notice was issued. The electronic module ought not to have generated a remark refusing the renewal applications for a lapse of more than one year. Cipla, Malhotra Book Depot, Harbans Singh Khanduja and Ipca Laboratories followed.

Other provisions of the Trade Marks Act

All 233 judgments on the Trade Marks Act, 1999 Search the IP Case Digest