Aurobindo Pharma Limited v. The Registrar Of Trade Marks
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 25.02.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY 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 -vsThe Registrar of Trade Marks, The Office of the Trade Marks Registry, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai 600 032.
... Respondent PRAYER: Writ Petition is filed under Article 226 of the Constitution of 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
number 636467 in class 5 and renew the same in accordance with due process of law.
For Petitioner : Mr.Arun C.Mohan for M/s.Rahul M.Shankhar For Respondent : Mr.V.Ashok Kumar, CGSC **********
ORDER
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. 2/6
2. 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.
3. In support of these contentions, learned counsel has filed several 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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4. 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.
5. 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 4/6
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.
6. 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.
25.02.2025 rna Index : Yes / No Internet : Yes / No 5/6
SENTHILKUMAR RAMAMOORTHY,J rna 25.02.2025 6/6