Who’s Responsible When A Mark Expires: Lessons from India & The Eu On Renewal and Registry Lapses

Introduction

For a business, ten years can pass in the blink of an eye, and in that time, it is not uncommon for even diligent trademark proprietors to overlook the need for renewal. Recognising this, the Trademark Act, 1999 introduced Section 25(3), which places a duty on the Registrar to notify proprietors about the upcoming expiry of their registration and the conditions for renewal. But what happens if the Registry forgets to send such notice, or sends it but fails to remove the trademark from the register of trademarks? What would be the consequence of such discrepancies by the Registry?

Such was the scenario in the recent decision in M/s. Sakthi Oil Mills v. The Registrar of Trademarks[i], delivered by the Madras High Court, which offered crucial insights into how courts navigate such situations. This case, concerning the trademark renewal, not only provided relief to the petitioner but also emphasized a pivotal criterion for trademark restoration and raised significant questions about the practical implications of an “entitled right to renewal”

Court’s reasoning in Post-Deadline Renewals

1.     M/s. Sakthi Oil Mills V. The Registrar of Trademarks

M/s. Sakthi Oil Mills, the proprietor of the trademark[ii], found itself in a predicament common to many old businesses. The trademark was initially filed in 2002, it was duly renewed in 2012, extending its validity until 2022. However, the petitioner's subsequent attempt to renew the trademark in October 2024 was denied on the grounds that the application was post-limitation period. This refusal led Sakthi Oil Mills to file a Writ Petition (IPD) seeking a Mandamus direction for the Registrar to allow the renewal.

The core of Sakthi Oil Mills' argument relied on a critical observation: as of October 29, 2024, the trademark had not been removed from the Register of Trademarks. This unremoved status became the cornerstone of their petition.

The primary argument of the counsel of the Registrar was that a notice in Form RG-3 (similar to the older Form O-3, which informs proprietors of approaching expiry) was issued to the petitioner’s in both Sakthi Oil Mills Therefore, the petitioner was not entitled to renewal at this juncture.

However, the Madras HC, presided over by Justice S.  Ramamoorthy focused on a more basic aspects. The Court’s acknowledged the admitted position that the last registration was valid until September 17, 2022. Crucially, the Court noted in Sakthi oil Mills that -

"in spite of non-renewal, the respondent has not taken any steps for the removal of the trade mark in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules framed thereunder".[iii]

This inaction by the Registrar proved decisive and the court concluded that the petitioner was "entitled to seek renewal”. These precedents establish a powerful principle: if a trademark, despite its renewal deadline passing, has not been procedurally removed from the Register by the Registrar, the proprietor retains a right to seek its renewal but with associated costs as the court may deem appropriate.

The important point herein was that the onus is on the Registrar to follow the complete process for removal, which includes not just issuing a notice (FORM RG-3) but also completing the act of removal from the Register. While granting this significant relief, the Court also recognized the petitioner's own responsibility. It stated that the petitioner was "under an obligation to apply for such renewal within a reasonable time". To "deter such laxity on the part of the petitioner in future," the Court imposed specific conditions:

1. The petitioner was directed to pay Rs. 20,000/- as costs to the Adyar Cancer Institute, Chennai, within 2 weeks.

2. And, the Court ordered the Registrar to give the petitioner 30 days to file the renewal online after paying costs.

2.     Motwane Private Ltd. v. Registrar of Trade Marks

In a similar case before the BHC in Motwane Private Ltd. v. Registrar of Trade Marks^[iv]  where the Justice GS Kulkarni & Justice F.P Pooniwalla held that the petitioners have a right to seek a renewal due to procedural lapse from registry -

“When there is a two-way lapse, that is, a lapse not only on the part of the registered proprietor in not making an application for renewal of registration, but also a lapse on the part of respondent no. 1 (Registrar), in not issuing notice of removal of the trade mark, the result would be, that the mark although not renewed would continue to remain on the register of respondent no.1, shown as the mark of the registered proprietor. In these circumstances, certainly an opportunity is available to the registered proprietor to make an application for renewal, for the reason that the mark is not removed from the register of trademarks, maintained by the Registrar”

3.     Rakesh Kumar Mittal v. Registrar of Trade Marks

In another case of the Delhi High Court’s 2025 ruling in Rakesh Kumar Mittal v. Registrar of Trade Marks[v] reinforces a key procedural safeguard in trademark law that is the Registrar must issue the mandatory Form RG-3 renewal notice before removing a mark for non-renewal. In this case, the proprietor’s trademark was removed without such notice, rendering the removal illegal and leading to its restoration.

This principle complements the Sakthi Oil Mills decision, where renewal was allowed because the mark, though expired, had not been removed from the Register. Together, they establish that‘

Either non-removal or procedurally defective removal preserves a proprietor’s right to seek restoration at the discretion of the court’

While courts strictly enforce the Registrar’s obligations, they may still impose costs for proprietor delay. The challenge lies in balancing procedural fairness with rights of the parties, making sure that the above cases of restorations act as safeguards against administrative lapses, not open ended opportunities for negligent proprietors.

Thus, the primary criterion for granting relief in Sakthi Oil Mills was the Registrar’s failure to complete the statutory removal of the trademark from the Register, Earlier court decisions had set an example that recognized a right to renew if the mark is still “on record.” The Rakesh Kumar & Motwane  rulings further reinforces this by holding that even if a trademark has already been removed, the absence of the mandatory renewal notice (as per Sec 25(3) of the TM Act, 1999 & Rule 64(1) of TM rules 2017) makes such removal procedurally invalid and open to restoration.

In a bigger sense, the above cases shows how a gap in the Registry’s process can throw a lifeline to trademark owners, but also why there needs to be a balance so that this safety net does not turn into a loophole that causes uncertainty or clogs the system.

Strict EU-Regime in Trademark Renewal

In Brainlab AG v. OHIM[vi] , the Court restored a trademark removed for non-renewal after an internal EUIPO error prevented notification for renewal to be sent to the proprietor. The crucial fact being that Brainlab had exercised all due care, and the Office’s mistake constituted an “exceptional circumstance” justifying restitutio in integrum (“restoration to the original condition”) But Brainlab was exceptional because the error lay with the Office, while later cases later on like Aurelia and The Green Effort made it clear that restitutio does not cover ordinary mistakes by proprietors.

The rulings in Aurelia Finance SA v. OHIM[vii] and The Green Effort Ltd v. EUIPO^[viii] refine the limits of that principle. In Aurelia, the Court refused restitutio because the missed deadline stemmed from foreseeable human error in the proprietor’s chosen renewal service, and the system lacked safeguards to detect such mistakes meaning “all due care” was not met. Further in The Green Effort Case, the Court strictly applied procedural time limits for appeals, rejecting reliance on deemed-notification rules when earlier access to the decision was proven. (Although the case pertained to revocation of trademark due to non-use, it still stands as a good example of restitutio in integrum relating to the underlying principal in Brainlabs case)

Taken together, these cases underscore a narrow pathway for relief: restoration is possible when a missed deadline results from an exceptional and unforeseeable procedural error by the Office, provided the proprietor has demonstrably exercised all due care. Conversely, foreseeable lapses in the proprietor’s own systems or failure to respect procedural deadlines will defeat such claims.

These cases show that restitutio in integrum is a limited remedy, available only when a rare mistake by the Office prevents a careful proprietor from acting, and not a way to excuse avoidable mistakes or poor internal systems.

Conclusion

EU cases like Brainlab draw a firm boundary that trademark restoration should remain a narrow safeguard rather than an open-ended remedy. Under the EU’s restitutio in integrum framework, restoration is granted only when –

a.     There’s a exceptional and unforeseeable procedural errors by the trademark office,

b.     and only if the proprietor can prove they exercised all due care.

In contrast, in India, the Registrar’s failure to issue a notice often results in restoration (Although at the discretion of the Judge and with costs and conditions), even where proprietor diligence is questionable or third-party rights may be affected. Adopting a more cautious approach could help reduce registration backlogs and legal uncertainty. Only then can the "lifeline" for existing marks avoid becoming a "loophole" that undermines the efficiency and clarity of the Trademark Registry.

Author: Rugved Mahamuni, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney. 

[i]  M/s. Sakthi Oil Mills v. The Registrar of Trademarks Madras High Court - W.P.(IPD)No.38 of 2024

[ii] "THENALEE" (registered under No.1133971 in Class 29)

[iii] Supra Note 1, para 5

[iv] Motwane Private Ltd. v. Registrar of Trade Marks and Anr. Writ Petition (L) No. 30537 of 2023 Bombay High Court

[v] Rakesh Kumar Mittal vs The Registrar Of Trade Marks Delhi HC - W.P.(C)-IPD 40/2024 & CM 141/2024

[vi] Brainlab AG v. OHIM (T-326/11, 2012)

[vii] Aurelia Finance SA v. OHIM (T-136/08, 2009)

[viii] The Green Effort Ltd v. EUIPO (C-282/18, 2019)