Trademark Registry Proved Dispatch of Renewal Notice Through Official Records; Bombay High Court Refuses to Revive Expired “SUNDAY” Mark
Facts
Raju Patel, trading as Anand Ply, was the original registered proprietor of the trademark “SUNDAY”, bearing Application Number 1823390.
He claimed to have used the mark from 1 February 2008. The Registrar of Trade Marks issued the registration certificate on 5 May 2011, and the registration remained valid until 29 May 2019.
On 26 February 2019, the Registrar generated a renewal notice in Form RG-3, earlier known as an O-3 notice, under Section 25(3) of the Trade Marks Act, 1999. The notice was dispatched by Speed Post on 1 March 2019 to Vishesh & Associates, the registered trademark agent of Raju Patel.
No application for renewal was filed before the registration expired or within the additional six-month period permitted under Section 25(3).
On 11 November 2024, more than five years after the registration expired, Raju Patel filed an interlocutory application before the Registrar. He sought permission to pay the renewal fees and requested that the trademark be renewed or restored, alleging that the renewal notice had never been served.
On 29 November 2024, Raju Patel assigned the trademark to Matra Mobili Private Limited. Documents seeking to record the assignment were filed before the Registrar on 21 March 2025.
Matra Mobili subsequently discovered that the online trademark register displayed an alert stating:
“Trademark is likely to be removed due to non-filing of Renewal request given the prescribed time-limit.”
Matra Mobili’s registered agent filed an application under the Right to Information Act, 2005, seeking information about the RG-3 notice.
The Central Public Information Officer supplied:
- The renewal notice number;
- The correspondence number;
- The dispatch number;
- The address of the registered trademark agent;
- The date of dispatch; and
- The Speed Post tracking number.
The Right to Information appellate authority affirmed that the notice had been sent by Speed Post on 1 March 2019.
The petitioners nevertheless contended that the notice was never received because the India Post website displayed “Consignment details not found” against the tracking number.
They approached the Bombay High Court, apprehending that the trademark would be removed from the Register of Trade Marks or become available for adoption by a third party.
Issues
- Whether the Registrar complied with the mandatory requirement of sending a renewal notice under Section 25(3) of the Trade Marks Act, 1999.
- Whether the Registrar was required to prove actual delivery of the notice or only its proper addressing and dispatch.
- Whether the absence of online postal tracking information after six years rebutted the statutory presumption of service.
- Whether the original proprietor’s inactivity for more than five years entitled him to seek belated renewal or restoration.
- Whether Matra Mobili Private Limited, as an assignee of an expired trademark, could claim rights superior to those held by the assignor.
- Whether apprehension that a third party might adopt the trademark constituted sufficient ground for granting writ relief.
Petitioners’ Arguments
The petitioners argued that compliance with Section 25(3) of the Trade Marks Act, 1999, was mandatory.
They contended that:
- The Registrar could not remove a trademark from the register without first serving the prescribed renewal notice.
- The RG-3 notice was never received by Raju Patel or his registered agent.
- The tracking number supplied by the Registrar could not be traced on the India Post website.
- The website displayed the message “Consignment details not found.”
- A dispatch number by itself did not establish proper service.
- The Registrar had failed to produce acknowledgment or delivery confirmation.
- The inability to file the renewal application resulted from the Registrar’s failure to serve the statutory notice.
- The trademark should therefore be permitted to be renewed or restored upon payment of the prescribed fees.
- Unless relief was granted, the mark might be removed from the register or adopted by a third party.
The petitioners relied upon earlier decisions where renewal or restoration had been permitted because the Registrar failed to establish compliance with Section 25(3).
Respondent’s Arguments
The Registrar of Trade Marks argued that the petitioners had failed to apply for renewal within the statutory period.
The Registrar submitted that:
- The registration expired on 29 May 2019.
- A proper RG-3 notice had been generated on 26 February 2019.
- The notice was dispatched by Government Speed Post on 1 March 2019 to the registered trademark agent.
- The notice was also uploaded on the Registrar’s online portal.
- The official outward dispatch register recorded the dispatch of the notice.
- The Right to Information proceedings supplied the correspondence, dispatch and postal consignment details.
- Other renewal notices contained in the same dispatch had been acted upon by the same trademark agent.
- Postal departments do not preserve online tracking data indefinitely.
- The absence of online tracking information after more than six years did not establish that the notice was never dispatched.
- Once a properly addressed notice was posted, a presumption of service arose under Rule 18 of the Trade Marks Rules, 2017, and Section 27 of the General Clauses Act, 1897.
- The original proprietor knew that the registration had expired but nevertheless assigned the mark to Matra Mobili.
- An assignee could not obtain a better legal right than the assignor possessed.
Analysis of the Law
Section 25 of the Trade Marks Act, 1999
Section 25 provides that a trademark registration ordinarily remains valid for ten years and may be renewed for further ten-year periods.
Under Section 25(3), before the registration expires, the Registrar must send the registered proprietor a notice stating:
- The date of expiration;
- The renewal requirements; and
- The prescribed fees and conditions.
If those conditions are not fulfilled, the Registrar may remove the trademark from the register.
The proviso grants an additional six-month period after expiration during which the proprietor may apply for renewal upon payment of the prescribed fee and surcharge.
The Court explained that this statutory arrangement balances two responsibilities:
- The Registrar must notify the proprietor of the approaching expiration; and
- The proprietor must monitor and renew its own registration within the prescribed period.
The renewal notice facilitates compliance but does not preserve an unattended registration indefinitely.
Rule 58 of the Trade Marks Rules, 2017
Rule 58 requires the Registrar to send a notice in Form RG-3 to the address for service not more than six months before the registration expires.
Rule 18 of the Trade Marks Rules, 2017
Rule 18 permits the Registrar to serve communications by post or electronic mail.
A communication sent by post is deemed served when it would ordinarily be delivered. To prove service, it is sufficient to establish that the letter:
- Was properly addressed; and
- Was placed into the post.
The Court therefore held that the Rules required proof of proper dispatch, not acknowledgment of actual receipt.
Section 27 of the General Clauses Act, 1897
Section 27 creates a rebuttable presumption of service where a document is properly addressed, prepaid and posted.
Once the sender proves these requirements, the burden shifts to the addressee to produce credible evidence rebutting service.
Precedent Analysis
Ipca Laboratories Limited v. Registrar of Trade Marks and Another
The Bombay High Court had previously permitted restoration or renewal where the trademark proprietor did not receive the mandatory notice.
The present Court distinguished that decision because there was no indication in Ipca Laboratories that the Registrar had taken steps to send the statutory notice. In the present case, contemporaneous records proved dispatch.
Cipla Limited v. Registrar of Trade Marks, 2013 Supreme Court Cases OnLine Bombay 1270
The Court held in that case that a general public notice did not satisfy Section 25(3), particularly when no evidence showed that the prescribed individual notice had been sent.
The precedent did not assist the petitioners because the Registrar had sent the RG-3 notice to Raju Patel’s registered trademark agent.
Cipla Limited v. Union of India, Writ Petition (Civil) – Intellectual Property Division Number 23 of 2025
The Delhi High Court permitted the proprietor to seek restoration where the tracking report of the O-3 notice was unavailable.
The Bombay High Court distinguished the decision because, in the present case, the Registrar produced the correspondence number, dispatch number, consignment number and official outward register. Records also showed that the same agent had acted upon other renewal notices from the same dispatch.
Guruji Enterprises Private Limited v. Union of India, 2017 Supreme Court Cases OnLine Delhi 7624
The Delhi High Court held that Rule 18 requires proof of proper dispatch and not proof of actual delivery.
The Bombay High Court applied this principle in favour of the Registrar.
International Business Machines Corporation v. Tivoli Gardens, 2026 Supreme Court Cases OnLine Delhi 828
This decision similarly recognised that proper addressing and dispatch satisfy the requirement under Rule 18.
Madan and Company v. Wazir Jaivir Chand, (1989) 1 Supreme Court Cases 264
The Supreme Court held that once proper dispatch is proved, the burden shifts to the addressee to rebut the presumption of service.
The petitioners failed to discharge that burden through cogent evidence.
Court’s Reasoning
The Court held that the Registrar discharged its statutory obligation under Section 25(3).
The following evidence proved proper dispatch:
- The renewal notice was dated 26 February 2019.
- It was sent by Speed Post on 1 March 2019.
- It was correctly addressed to the registered trademark agent.
- The outward dispatch register recorded the transaction.
- The Registrar supplied the correspondence, dispatch and consignment numbers.
- Other renewal notices included in the same dispatch were acted upon by the same trademark agent.
Once these facts were established, the presumption of service under Rule 18 and Section 27 arose.
The present inability to retrieve the tracking information from the India Post website did not rebut that presumption. The petitioners attempted to verify the tracking details only in 2025, more than six years after dispatch. They did not establish that postal tracking records were preserved indefinitely.
The registered trademark agent was neither made a party to the petition nor filed an affidavit denying receipt of the notices recorded in the outward register.
The Court also criticised the petitioners’ prolonged inactivity. Raju Patel took no steps for more than five years after the registration expired and offered no adequate explanation for that delay.
The application for renewal was filed shortly before the assignment to Matra Mobili. The Court inferred that the assignee would ordinarily have conducted commercial due diligence and discovered that the registration had expired.
Matra Mobili, as an assignee, could not acquire any better right than Raju Patel possessed on the date of assignment.
The apprehension that the trademark might be removed or adopted by a third party could not justify reopening the statutory renewal period after years of inaction.
Conclusion
The Bombay High Court held that:
- The Registrar properly issued and dispatched the mandatory RG-3 renewal notice.
- Proof of actual delivery was not required once proper addressing and posting were established.
- A statutory presumption of service arose under Rule 18 of the Trade Marks Rules, 2017, and Section 27 of the General Clauses Act, 1897.
- The missing online tracking information after six years did not rebut that presumption.
- The original proprietor failed to monitor or renew the registration for more than five years.
- The assignee could not acquire a better right than the assignor.
- No legal infirmity was established in the Registrar’s action.
The writ petition was dismissed, the rule was discharged and no order as to costs was passed.
Case Details
Case: Raju Patel, Trading as Anand Ply and Another v. Registrar of Trade Marks, Mumbai
Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction
Case Number: Writ Petition Number 4868 of 2025
Judges: Acting Chief Justice Ravindra V. Ghuge and Justice Gautam A. Ankhad
Judgment By: Justice Gautam A. Ankhad
Reserved On: 3 July 2026
Pronounced On: 21 July 2026
Result: Writ petition dismissed; statutory presumption of service upheld; rule discharged; no order as to costs.
