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Aurobindo Pharma Limited v. the Registrar of Trade Marks

Madras HC25 Feb 2025WP(IPD)/34/2024

Case brief

AI extract

What is this about?

Trade mark renewal after delay; failure of Registrar of Trade Marks to issue six-month pre-expiry notice; non-removal of mark from register; Article 226 writ of mandamus; renewal fees per ten-year block; portal access or physical filing; TM ENRIL No.636467 class 5; Aurobindo Pharma Ltd v. Registrar of Trade Marks, Chennai; followed Jaisuryas Retail Ventures (2024:MHC:3109; 2024(100) PTC 25 (Mad)) and Pandiyan (W.P.(IPD) No.36 of 2024, order dated 13.02.2025).

What did the court decide?

Registrar of Trade Marks directed to provide portal access to enable filing of the renewal application for TM ENRIL No.636467 (class 5) with requisite renewal fees for each applicable block of ten years; alternatively, to receive and process the renewal application in physical form. No costs. ¶35

Aurobindo Pharma Limited Vs the Registrar of Trade… — Writ and Judicial Review | Madras HC (2025)

What the court decided

AI extract

Outcome

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Issue for consideration

Whether the petitioner may be permitted to file a renewal application for trade mark ENRIL (No.636467, class 5) notwithstanding the delay in seeking renewal. +1 more

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Court's answer

The writ petition is allowed; the Registrar of Trade Marks is directed to provide access to the portal to enable the petitioner to file the renewal application with requisite renewal fees for each applicable block of ten years.

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Ratio / Principle

As in Pandiyan, the respondent admittedly took no steps to remove the trade mark from the register.

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Key takeaways

In view of the Registrar's failure to put the registered proprietor on notice of impending expiry and its failure to remove the mark, it is open to the petitioner to seek renewal subject to remitting all outstanding renewal fees.ratio¶34
In the alternative, the respondent is directed to receive and process the renewal application in physical form.ratio¶35

Detailed headnote1 paragraphs

Madras High Court (Senthilkumar Ramamoorthy, J.) allowed a writ petition under Article 226 by Aurobindo Pharma Limited seeking a direction to the Registrar of Trade Marks to permit filing of a renewal application for trade mark ENRIL (No.636467, class 5). Registration was applied for on 10.08.1994 and the certificate issued on 18.07.2018; the online renewal could not be filed owing to a delay of more than one year. The Registrar was unable to produce proof that notice of impending expiry was served, and the mark remained on the register with no removal action. Following Jaisuryas Retail Ventures and Pandiyan, the court held that the Registrar's failure to put the registered proprietor on notice of impending expiry, coupled with its admitted failure to remove the mark from the register, entitled the petitioner to seek renewal subject to remitting all outstanding renewal fees for each applicable block of ten years. The Registrar was directed to provide portal access for filing the renewal application or, alternatively, to receive and process it in physical form. No costs.

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W.P.(IPD) No.34 of 2024

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED : 25.02.2025

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CORAM

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THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

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W.P.(IPD) No.34 of 2024

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AUROBINDO PHARMA LIMITED Registered Office at Plot No.2, Maitrivihar, Ameerpet, Hyderabad 500 038 Telangana State, India and Its Corporate Office at: Galaxy, Floors 22-24, Plot No.1, Survey No.83/1, Raidurg Panmaktha, Hyderabad Knowledge City, Ranga Reddy District, Hyderabad 500 032, India. Rep. By its General Manager – Legal Mr.V.Praveen Krishna ... Petitioner

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-vs-

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The Registrar of Trade Marks, The Office of the Trade Marks Registry, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai 600 032. ... Respondent

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PRAYER : Writ Petition is filed under Article 226 of the Constitution of

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India, pleased to issue a Writ of Mandamus, to permit the petitioner to file renewal application for renewing the Trade Mark ENRIL registered under 1/6

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https://www.mhc.tn.gov.in/judis

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W.P.(IPD) No.34 of 2024

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number 636467 in class 5 and renew the same in accordance with due process of law.

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For Petitioner : Mr.Arun C.Mohan for M/s.Rahul M.Shankhar

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For Respondent : Mr.V.Ashok Kumar, CGSC

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ORDER

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By this writ petition, the petitioner seeks a direction to the Registrar of Trade Marks to permit the petitioner to file a renewal application for renewing the registration of trade mark ENRIL, which was registered under Trade Mark No.636467 in class 5. The petitioner applied for registration of the above mentioned trade mark on 10.08.1994. The certificate of registration appears to have been issued on 18.07.2018. The petitioner requested the Registrar of Trade Marks to renew the registration. The petitioner has placed on record a screen-shot indicating that the application cannot be renewed on account of the delay being more than one year.

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https://www.mhc.tn.gov.in/judis

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W.P.(IPD) No.34 of 2024

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By referring to the status of the trade mark as on 11.10.2024, learned counsel for the petitioner states that the status is specified as registered on the official website of the respondent. By further submitting that the respondent was under an obligation to issue notice six months prior to the date of expiry of registration and that such notice was not issued to the petitioner, learned counsel contends that the respondent be directed to receive and process the renewal application. In this regard, he submits that the petitioner undertakes to pay renewal fees for each applicable block of ten years.

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In support of these contentions, learned counsel has filed several

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judgments. He invites my attention to the judgment in Jaisuryas Retail Ventures Private Limited v. The Registrar of Trade Marks 2024:MHC:3109; 2024(100) PTC 25 (Mad), ('Jaisuryas Retail Ventures') . He also refers to a more recent order in P.Pandiyan v. The Registrar of Trade Marks, order dated 13.02.2025 in W.P.(IPD) No.36 of 2024 (Pandiyan) . Learned counsel submits that the fact situation in the present case broadly mirrors that in Pandiyan .

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https://www.mhc.tn.gov.in/judis

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W.P.(IPD) No.34 of 2024

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In response, Mr.V.Ashok Kumar, CGSC, submits that he is unable to obtain and submit any proof that notice regarding expiry of registration was served on the petitioner. In this regard, learned counsel for the petitioner submits that he has examined the records of the trade marks registry and that such records do not disclose any details of service of notice on the petitioner. Learned counsel for the respondent further submits that the petitioner should have applied for registration within six months from the date of issuance of the certificate and has instead applied belatedly in 2024.

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The petitioner has placed on record the status of the trade mark as on 07.11.2024. It is evident therefrom that the trade mark remains on the register and that no action has been taken for the removal thereof. In ' Jaisuryas Retail Ventures' , I concluded that the failure of the respondent to put the registered proprietor on notice with regard to the impending expiry of registration and remove the trade mark from the register thereafter open the door for such registered proprietor to seek renewal. In Pandiyan , the

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https://www.mhc.tn.gov.in/judis

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W.P.(IPD) No.34 of 2024

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fact situation was nearly identical inasmuch as the registration certificate was issued after the date of expiry of the term of original registration. As in that case, in this case also, admittedly, the respondent has not taken any steps to remove the trade mark from the register. In these circumstances, it is open to the petitioner to seek renewal subject to remitting all outstanding renewal fees in such regard.

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Therefore, W.P.(IPD) No.34 of 2024 is allowed by directing the Registrar of Trade Marks to provide access to the portal so as to enable the petitioner to file the application for renewal along with requisite renewal fees for each applicable block of ten years. In the alternative, the respondent is directed to receive and process the application for renewal in the physical form. No costs.

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25.02.2025

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rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No

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https://www.mhc.tn.gov.in/judis

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W.P.(IPD) No.34 of 2024

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SENTHILKUMAR RAMAMOORTHY,J