Madras High CourtWP(IPD)/35/2024allowed with costs

M/S Designo Lifestyle Solutions Private Ltd, v. The Registrar Of Trade Marks,

2025-02-25Honourable Mr Justice Senthilkumar Ramamoorthy6 pages

IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED: 25.02.2025

CORAM

THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY M/s.Designo Lifestyle Solutions Private Ltd., Old No.9, New No.15, 1st Floor, Khader Nawaz Khan Road, Nungambakkam, Chennai 600 006 represented by its Authorized Signatory, Mr.Akshaya Badrinarayanan ... 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 SO FA, SO GOOD 1/6

registered under number 1775649 in class 99 and renew the same in accordance with due process of law.

For Petitioner : Mr.S.Karthik for Mr.Arun C.Mohan For Respondent : Ms.S.P.Arthi, SPC **********

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 SO FA, SO GOOD, which was registered under Trade Mark No.1775649 in class 99. The petitioner's predecessor-in-interest applied for registration of the above mentioned trade mark on 19.01.2009 by asserting use since 07.02.2001. The registration certificate was issued on 09.03.2012. Since the registration was with effect from 19.01.2009, it was due for renewal on 19.01.2009. Meanwhile, the trade mark was assigned to the petitioner by its predecessor-in-interest. By asserting non receipt of notice of expiry of the trade mark, the petitioner sought for renewal in 2024. Such request was not acceded to on the ground 2/6

that a mark cannot be renewed after a delay of more than one year. Hence, this writ petition.

2. Learned counsel for the petitioner invited my attention to the deed of assignment and to the status of the trade mark as on 20.11.2024. He points out that the respondent has mentioned the petitioner's name as the registered proprietor. In spite of recognizing the petitioner is the registered proprietor, he submits that the petitioner was not sent a notice of the date of expiry of registration.

3. In response, learned counsel for the respondent submits that the deed of assignment is dated 30.09.2010, whereas the petitioner did not apply for registration of the assignment for about eight years. Consequently, he submits that notice was sent to the predecessor-in-interest of the petitioner on 27.01.2018 with regard to the impending expiry of the registration. In these circumstances, he submits that the petitioner is not entitled to discretionary relief.

3/6

4. The status of the trade mark discloses that the said trade mark has not been removed from the register as on date. The documents on record include the deed of assignment dated 30.09.2010. The petitioner was under an obligation to take necessary steps for recording the assignment in the records of the respondent within a reasonable time. The petitioner did not do so. However, the respondent has been unable to place on record any proof of service of notice of the expiry of registration either on the predecessor-in-interest of the petitioner or on the petitioner. In any event, the record also discloses that no steps for removal of trade mark were taken. Therefore, in accordance with principles laid down in Jaisuryas Retail Ventures v. The Registrar of Trade Marks 2024:MHC:3109; 2024(100) PTC 25(Mad), the petitioner is entitled to apply for renewal. In order to laxity in future, it is necessary to put the petitioner on terms.

5. For reasons aforesaid, W.P.(IPD) No.35 of 2024 is allowed subject to the petitioner paying a sum of Rs.20,000/- (Rupees Twenty Thousand only) as costs to the Adyar Cancer Institute by directing the Registrar of 4/6

Trade Marks to enable the petitioner to file an application for renewal of the trade mark by providing access to the portal for such purpose. Such application shall be filed along with requisite renewal fees within thirty days from the date of receipt of a copy of this order. 25.02.2025 rna Index : Yes / No Internet : Yes / No 5/6

SENTHILKUMAR RAMAMOORTHY,J rna 25.02.2025 6/6