Rajinder Singh v. The Registrar of Trade Marks

12. Petitioner claims that in the interregnum, the petitioner was unaware of any intimation by the Trade Mark Registry under the provisions of Section 25 of the Trade Marks Act, 1999 either to the petitioner or to its Agent. Petitioner states that on 15.12.2025, he changed the Agent and executed a new Power of Attorney in favor of ‘Blue Inkk’ at Goel Niwas, J-62, Street No.4, Laxmi Nagar, Delhi-110092. It is further stated that the new Agent of the petitioner discovered that the application of the petitioner is pending for renewal and a notice under Form RG-3 has already been sent, although, to the previous Agent of the petitioner on the old address which has been returned.

13. It is stated that the new Agent of the petitioner attempted to file Form TM-R for renewal of the Trademark Application no.870775, however, was not permitted to file by the online e-comprehensive filing system, constraining the petitioner to file the present writ petition.

14. On 03.02.2026, when the matter was taken up for hearing, learned counsel appearing for the petitioner submitted that Prayers C. & D. challenging Rules 58(2) and 58(3) of the Trade Marks Rules, 2017 as ultra vires to the Trade Marks Act, 1999, is not pressed in the present petition and sought liberty to challenge the vires of these Rules in an appropriate petition, which was granted by this Court.

15. Pursuant to the order dated 18.02.2026, the respondent had filed its short affidavit stating inter alia as under:-

Application No. 870775, Petitioner gave the address for service as 'Super Trade Mark Co., 14, State Bank Nagar, Paschim Vihar, New Delhi - 110063’ (“first 1 address for service”). Copy of the Petitioner’s Form TM- 1 showing the first address for service is annexed herewith as Annexure - A.

4. Thereafter, the Petitioner on 16.04.2003 filed Form - 48, wherein the Petitioner mentioned its address as ‘Super Trade Mark Co., I59-E, Kamla Nagar, Delhi - 100007’ (“second address”). It is submitted that Form TM - 48 is only for “authorization of the agent” which simply means that some other agent has been authorized on the Petitioner’s behalf. Copy of the Petitioner’s Form TM -48 is annexed herewith as Annexure - B.

5. It is submitted that Form TM-16 (now Form TM-M) with the prescribed fee was the appropriate form for change of address for service, which has never been filed by the Petitioner till date, due to which the address for service in the database of the Trademarks Registry as of date reflects the first address for service i.e. ‘Super Trade Mark Co., 14, State Bank Nagar, Paschim Vihar, New Delhi - 110063’. Copy of the latest Status Page reflecting the first address for service is annexed herewith as Annexure - C.

6. It is submitted that Form TM-48 cannot be constituted as a substitute of Form TM-16 for change in the address for service. Copy of sample Form TM - 16 is annexed herewith as Annexure - D.

7. Even assuming that certain communications in earlier proceedings were sent at a different address (which were manually done), the same does not dispense with compliance under the Act by the applicant/registered proprietor for change of address for service in the manner prescribed by law, nor the timelines under Section 25 of the Act.

8. Mere mention of an address in the correspondence, pleadings or agency documents filed in opposition proceedings cannot be treated as conclusive proof that a formal statutory request to amend the address for service for all future purposes stood validly and duly recorded in the register/system. Registry cannot treat every filing bearing a letterhead/address as a formal statutory request for change of address for service.

9. It is to be considered that the RG-3/O[3] notices are not being sent manually. The RG-3/O[3] notices are computer generated and are sent automatically on the address which is recorded in the database of the Trademarks Registry. Unless the Applicant files the appropriate Form TM-16, the address for service could not have been changed. It is because of this reason that the RG-3/O[3] notice might have been sent to the old address.

10. It is pertinent to note that the details of returned/non-delivered RG-3/O[3] notice in the present case was uploaded on the Trademarks Registry’s database on 29.05.2019, which is also reflected and was available online for the Petitioner to access. Copy of the online status showing that the details of returned/non-delivered RG-3/O[3] notice in the present case was uploaded on the Trademarks Registry’s database on 29.05.2019 is annexed herewith as Annexure - E.

11. It is submitted that since 29.05.2019 to 15.12.2025, the Petitioner had neither taken any steps whatsoever to get the address for service changed/amended in the records of the Trademarks Registry, nor has it filed any request for renewal when it was aware that its mark was valid only till 11.08.2019 (refer Document - 20 @ Pg. 144 of the Petition). The Petitioner cannot shift the burden of its own procedural non-compliance upon the Trademarks Registry.

12. The Petitioner herein has given in total 4 addresses along with different forms and applications:

13. It is to be noted that all these addresses have been informed to the Registry by not filing the appropriate Form (TM-16) but by filing other documents including Form TM-48, Counter-statement in opposition proceedings, evidence in opposition proceedings, etc. The table above explains how the communication of “new address” has been done by the Petitioner. It is submitted that the Respondent without any formal request from the petitioner can not change the address for service in the record.

14. Therefore, the Petitioner itself has not complied with the statutory requirement by not filing the appropriate Form (TM-16).

15. In view of the aforementioned facts, circumstances, it is most respectfully prayed that the present Writ Petition may be dismissed by this Hon’ble Court.”

16. Having heard Mr. Bilal, learned counsel for the petitioner and Ms. Nidhi Raman, learned CGSC for the respondent and having examined the material on record, this Court is inclined to allow the present petition.

17. It is relevant to note that the objection raised by the respondent is in respect of non-updation of the records, on account of the petitioner having failed to file Form TM-16 (now Form TM-M) which was the appropriate way to update the Registry Records of the change of address of service in the manner prescribed by the Trade Marks Rules, 2002.

18. The contention of the respondent was that Rules 17 and 18 of the Trade Marks Rules, 2017 prescribe the change of address for communication/service and Rule 19 prescribes Form TM-M for the change of the trademark agent/agency, to be communicated to the Trade Marks Registry. If such Form is not filled or submitted by the individual, there lies no obligation on the Trade Marks Registry to effect any such change. It was stated that mere communication of the change in the name and address of the Agent, without the appropriate Form being filed, is not sufficient as there are hundreds of communications received by the Trade Marks Registry everyday and it would be well nigh impossible to sift and update the records. It is emphasized that it is precisely for this reason that various Forms are engrafted and prescribed under the Rules.

19. It was further contended that the RG-3/O-3 Notice was not only tried to be served upon the Agent but also the petitioner at the address available with the Trade Marks Registry which is the same as mentioned in the memo of parties to the present petition too. It was submitted that the Notice sent to the petitioner himself was on the only and correct address of the petitioner. It was contended that once the address is correct and the notice has been dispatched to the correct address, service is deemed to have been effected. Thus, according to the respondent, once the Notice has been served upon the petitioner or his Agent, the mandate under Section 25(3) of the Act stands complied with. In such circumstances, if the petitioner does not take appropriate steps within time to renew his trademark, the Registrar of Trade Marks is under legal obligation to remove the said trademark from the records of the Trade Marks Register.

20. What is relevant to be considered is that while the opposition proceedings were pending, the petitioner had changed its Agent and the change in name and address of the Agent was furnished to the Trade Marks Registry vide communication dated 01.07.2004. It is significant to note that the communications thereafter emanating from the Trade Marks Registry were in fact curiously issued to the Agent at the new address, i.e., 159-E, Kamla Nagar, Delhi-110007. This is not disputed at all.

21. Further communications were also addressed to the new address of the Agent by the Trade Marks Registry. In fact, the petitioner asserts that the opponent also sent its communications to the said new address of the petitioner’s Agent.

22. In the interregnum, due to non-appearance of the opponent in the opposition proceedings, the said opposition was dismissed under Rule 50(4) of the Trade Marks Rules, 2017 and the petitioner’s Trademark Application bearing no.870775 was ordered to be registered. Subsequently, upon an application made by the petitioner in Form TM-R, the Registrar of Trade Marks, on 28.09.2018, renewed the Trademark Application bearing no.870775 of the petitioner for ten years from 11.08.2009. Thus, the mark of the petitioner was registered and continued to remain on the Register of Trade Marks.

23. While things stood thus, it is pertinent to note that strangely, when it came to issuance of notice of renewal of trademark of the petitioner, the Trade Marks Registry sent the said RG-3/O[3] Notice, on 16.05.2019, to the Agent of the petitioner at the old address, i.e., 14, State Bank Nagar, Paschim Vihar, New Delhi-110063. Though it was contended that the said RG-3/O[3] Notice was also sent to the petitioner at his own address i.e., BE-345A, Street No.2, Hari Nagar, New Delhi-110064, which was correctly available in the records of the Trade Marks Registry, however, the petitioner denied receiving any such notice. No proof of delivery etc., has been placed on record by the respondent. In such circumstances, it would be difficult for this Court to assume deemed service upon the petitioner, even if it were to be believed that the same was indeed also sent to the petitioner at his address as available in the records of the Trade Marks Registry.

24. Another relevant and significant aspect of the case is that the Hearing Notices dated 05.09.2015, 15.10.2015, 22.08.2017 and 14.12.2017 during the opposition proceedings were all along and continuously being issued and sent to the new address i.e., 159-E, Kamla Nagar, Delhi-110007. So much so, that even the Registration Certificate dated 28.09.2018 granting renewal of the registration of trademark of the petitioner from 11.08.2009 for 10 years, was also sent to the said new address.

25. In such circumstances and facts detailed above, it is unfathomable as to why the Trade Marks Registry would issue Form RG-3/O[3] Notice to the old address of the erstwhile Agent.

26. Additionally, it is significant to note that the arguments raised on behalf of the respondent that the petitioner has not complied with the Rules which prescribed specific Forms for recording the change in the name and addresses of the Agent is concerned, the same is belied by the undeniable facts noted above. Once the Trade Marks Registry, for all intents and purposes has noted the fresh address of the Agent and has by its conduct of corresponding, even to the extent of sending the Registration Certificate of the petitioner, to the Agent on the new address, it does not lie in the mouth of the respondent to now contend that the petitioner has not complied with the prescribed Rules. Thus, the said argument is rejected.

27. That apart, the relevance and criticality of service of notice of renewal under Section 25(3) of the Act has been considered by this Court in Coldsmiths Retail Services Private Limited vs. Registrar of Trade Marks, W.P.(C)-IPD 37/2025, decision dated 17.02.2026. The relevant portions are extracted hereunder:-

28. It is critical to note that this Court, in Coldsmiths (supra), condoned the delay of 1.5-2 years in preferring the writ petition. That was based on the judgement of the learned Division Bench in Charanjiv Kumar Taneja Trading as Chirag Enterprises vs. Registrar of Trade Marks, LPA 461/2023, decision dated 25.07.2023, where, in similar circumstances, a delay of 16 years was condoned.

29. Thus, the delay of 6.[5] years in filing the present petition in view of the above circumstances may not be hit by delay and laches.

30. Thus, in view of the above, the contentions of the petitioner are accepted.

31. Resultantly, the petitioner is permitted to file afresh the Form TM-R in respect of the trademark registered in his name on deposit of the prescribed fee and any amount payable as fine prescribed by the Rules within 15 days from date. The respondent shall accept such Form TM-R by the petitioner, if submitted within the time prescribed above, and process the same in accordance with the Rules. The said exercise will be carried out within eight (8) weeks from the date of receipt of the said Form from the petitioner.

32. The writ petition is allowed in above terms and disposed of with all pending applications.

TUSHAR RAO GEDELA (JUDGE) MAY 12, 2026