Too Late to Renew? Trademark granted after 13 years!

Summary

R. Booma Rani, a safety match maker from Sattur, owns the THOTHA label mark, which took sixteen years to reach registration after a long opposition. By the time the certificate issued, the first ten-year term had already ended, and the Registry's online portal refused trademark renewal for delay. The Madras High Court held that the Registrar cannot refuse renewal while the mark has not been removed from the register, and that Journal publication is not issuance of the certificate. The ruling matters for proprietors caught in Registry delays and for practitioners advising on lapsed renewals.

Background

A trade mark application filed in 2007 matured into a registration certificate only in 2023, sixteen years later, by which time the first ten-year term had already lapsed. The Madras High Court had to decide whether trademark renewal remained possible for a mark that the Registry never removed from the register.

Booma Rani (“Booma Rani”), proprietor of Ayyanar Match Works in Sattur, Tamil Nadu, owns the THOTHA label mark, a Hindi-language device with a parrot picture, used for safety matches since 1 August 1990. She applied for registration on 20 February 2007 through trade mark agents. A rival, Agarwal Gudakha Factory, opposed the application, and evidence was filed by 2009. The matter then stalled for about thirteen years. A hearing notice dated 29 December 2022 went to her old address, which the local body had since renumbered, and returned undelivered. The opposition was dismissed on 6 February 2023, and the registration certificate followed the next day. The first ten-year term, counted from the application date, had ended on 20 February 2017.

Booma Rani learned of the registration only in September 2025, when her present counsel checked the register. Her online renewal attempt on 27 September 2025 failed with a message citing delay of more than one year. The Registry advised her to seek condonation, and in January 2026 told her orally that it had no power to condone delay. She then filed a writ petition against the Registrar of Trade Marks (“Registrar”) before the Madras High Court, which decided it on 1 October 2026.

Issues

1. 1. Whether the Registrar can refuse renewal under Section 25 of the Trade Marks Act, 1999 (“Trade Marks Act”) read with Rule 58(3) of the Trade Marks Rules, 2017 (“Trade Marks Rules”), where a mark was registered after its first renewal date but has not been removed from the register.
   2. Whether the Registry proved issuance of the registration certificate under Section 23(2) of the Trade Marks Act, so as to start the six-month renewal window.

Booma Rani’s Arguments

• • The certificate was generated but never issued or served on her, so the six-month period under Rule 58(3) never began.
  • The e-Register’s email field was blank, which disproved the claim that the certificate was emailed to her counsel.
  • The public notice of 28 July 2016 on electronic service covered only marks published from Journal No. 1720 onwards, and THOTHA was advertised in 2008.
  • The portal’s rejection blocked renewal altogether, although the mark remained on the register. She relied on Jaisuryas Retail Ventures Pvt. Ltd. v. Registrar of Trade Marks (2024:MHC:3109), which allows renewal while a mark is unremoved.

Registrar’s Arguments

• • The certificate was emailed to her counsel and published in the Journal, and postal attempts failed because the premises were locked or the mail unclaimed.
  • She never told the Registry of her address change.
  • The Trade Marks Act has no power to condone delay, and the last date to renew with surcharge was 7 February 2024.
  • The status “likely to be removed” showed that removal would follow in due course.

Court’s Analysis

Removal, not refusal, follows non-renewal

The court noted that Section 25 of the Trade Marks Act gives registration a ten-year life, renewable for further ten-year periods, and that Rule 58(3) allows trademark renewal within six months of the actual registration date where a mark is registered after its renewal date. The court observed that the same rule makes removal the only consequence of a missed window. The court held that removal is a separate step, which the Registrar must take and advertise in the Journal under Rule 59, with restoration available under Rule 60. A portal message announcing delay, the court stated, is not an order under the Trade Marks Act and cannot stand in for removal.

The court further observed that the mark had never been removed. More than three and a half years after the six-month window closed, the Registry still said only that the mark would be removed in due course. The court reasoned that while a mark stays on the register in the proprietor’s name, trademark renewal remains open to her. It followed Jaisuryas, which holds that renewal may be sought at any time after the earliest date fixed by Rule 57(1), so long as the mark has not been removed.

No proof that the certificate reached the proprietor

The court found that the Registry’s claim of emailing the certificate to the proprietor’s counsel was unproved. The counter affidavit gave no email address, date or dispatch record, the e-Register’s email column was blank, the 2016 public notice did not reach a mark advertised in 2008, and present counsel came on record only in 2025. The court held that publication in the Journal is not issuance of the certificate to the applicant under Section 23(2).

The court opined that the Registry’s own records therefore gave no safe basis to say that time had run against a proprietor who had lost touch with her former agents after her premises were renumbered. The court added that its conclusion did not depend on deciding when the six months begin to run.

A ruling confined to the proprietor’s renewal right

The court clarified that it was not condoning any delay. The court held that no time bar applies to trademark renewal of a mark that remains on the register, and that this holds even if the six months are counted from the actual registration date, as the Registrar urged. The court noted that Booma Rani has used THOTHA since 1990 and that the Registry accepted that no third party is affected. The court confined its order to her right to seek renewal.

Findings

In view of the observations and the arguments presented by both the parties, the Madras High Court held that:

• • The Registrar cannot refuse trademark renewal of a mark registered after its first renewal date while the mark remains on the register, because removal under Rules 58(3) and 59 is a separate step that had not occurred.
  • The Registry did not prove that it issued the registration certificate by email, and Journal publication is not issuance under Section 23(2) of the Trade Marks Act.
  • No time bar applies to renewal of a mark still on the register, and the court granted this relief without condoning delay.
  • Booma Rani may file Form TM-R for the THOTHA mark within four weeks of receiving the order, with the prescribed fee and any surcharge, and the Registry must enable online filing or accept a physical application.
  • Within four weeks of the filing, the Registry must renew the registration under Section 25(2) for 20 February 2017 to 20 February 2027, and must not remove the mark in the meantime.
  • The next renewal falls due on 20 February 2027, and the court made no order as to costs.

Booma Rani v. The Registrar of Trade Marks, W.P.(IPD) No. 14 of 2026, High Court of Judicature at Madras, decided on 1 October 2026. The Court order may be viewed and downloaded from here – Booma Rani v. Registrar – Trademark renewal

Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels