When a Renewal Notice Goes to the Wrong Address: Trademark Renewal, Section 25(3) and the Registrar’s Duty in Rajinder Singh v. Registrar of Trade Marks

By Lucy Rana and Rupin Chopra

The decision at a glance

• The Delhi High Court (Justice Tushar Rao Gedela) allowed a writ petition and revived the proprietor’s right to renew trademark no. 870775 — the “B.P.R.” mark in Class 7 — after the statutory renewal (RG-3/O-3) notice was sent to an address the proprietor’s agent had left years earlier.
• The Registry’s defence — that the proprietor never filed the prescribed form (Form TM-16, now Form TM-M) to change its address for service — failed. The Registry had itself corresponded with the “new” address for over a decade, including sending hearing notices and the renewal certificate there.
• Following Coldsmiths Retail Services (2026), the Court reaffirmed that the duty under Section 25(3) of the Trade Marks Act, 1999 to serve an effective renewal notice rests on the Registrar and is not a mere procedural formality.
• Mere dispatch to the proprietor’s own address, without any proof of delivery on record, was not enough to establish deemed service.
• A delay of roughly 6.5 years in approaching the Court was condoned, given the drastic consequence of losing a registered mark.
• The challenge to Rules 58(2) and 58(3) of the Trade Marks Rules, 2017 (the restoration timelines) was withdrawn with liberty to raise it separately — leaving that structural question open for another day.

The question at the heart of the case

Can a proprietor lose a valuable registration simply because a renewal notice was sent to an outdated address — even where the Trade Marks Registry had, for years, used a different address for every other communication? That is the question the Delhi High Court confronted, and its answer turns on a distinction that many brand owners never think about until it is too late: the difference between the address the Registry actually writes to, and the address formally recorded in its database as the “address for service.”

For businesses, the practical stakes are high. A lapsed registration does not merely inconvenience the owner; it exposes a live, commercially used brand to adoption by a third party, and can trigger avoidable and expensive litigation to recover ground that ought never to have been lost.

The facts: a mark that outlived four addresses

The proprietor claimed use of the mark “B.P.R.” from 1979 for electric motors, pumps, compressors and allied goods, and filed application no. 870775 in Class 7 in 1999. Over the two decades that followed, the mark travelled a long procedural road — an examination objection, acceptance and advertisement, an opposition by a third party, dismissal of that opposition for non-appearance, registration in 2018, and a renewal recorded in the same year.

Across that journey, the address at which the proprietor’s agent could be reached changed several times. Those changes were communicated to the Registry — but through a Power of Attorney (Form TM-48), a counter-statement in the opposition, evidence filings and a renewal form — rather than through the specific form the Rules prescribe for altering the address for service. Crucially, the Registry acted on the new address in practice: hearing notices, correspondence and even the renewal certificate were sent there.

Then, in 2019, when the mark fell due for renewal, the system-generated RG-3/O-3 notice was posted not to the address the Registry had been using, but to the agent’s original address from 1999. It came back marked “no such firm.” The proprietor says he learned of the problem only in December 2025, when a new agent found the renewal pending and the online filing system would not accept a fresh renewal form — which is what brought the matter to the writ court.

The mark had, in effect, four addresses in the record and one live one in practice. The renewal notice went to none of the addresses the Registry had actually been using.

The Registry’s defence: “you never filed the right form”

The Registry’s position was, on its face, orderly. The only correct way to change the address for service, it argued, is Form TM-16 (now Form TM-M) with the prescribed fee. A Power of Attorney (Form TM-48) authorises an agent; it does not change the address of record. Because Form TM-16 was never filed, the database continued to reflect the 1999 address, and RG-3 notices — which are computer-generated and dispatched automatically to whatever the database holds — inevitably went there.

The Registry added two further points. First, it said the notice had also been sent to the proprietor’s own correct address, so service was, in any event, deemed complete under Section 25(3). Second, it pointed out that the returned-notice status had been visible online since 2019, yet the proprietor did nothing for over six years — and cannot now shift the burden of its own non-compliance onto the Registry.

There is genuine administrative logic here. The Registry receives a very high volume of correspondence, and prescribed forms exist precisely so that record changes are captured reliably rather than gleaned from the letterhead of whatever document happens to arrive. In the ordinary case, that argument would carry real weight.

Why the Court was unpersuaded: the Registry cannot approbate and reprobate

The Court accepted the general principle but held that, on these facts, it could not rescue the Registry. The decisive point was the Registry’s own conduct. Having treated the new address as the operative one for years — issuing hearing notices to it, corresponding through it, and sending the very registration and renewal documents there — the Registry could not, at the single moment that mattered, disown that address and fall back on a database field it had itself long departed from.

In substance, this is an application of the principle that a party cannot approbate and reprobate: it cannot take the benefit of an address for all routine purposes and then deny it when the consequence of denial is the loss of the proprietor’s mark. The Court described it as not lying in the Registry’s mouth to plead non-compliance after conducting itself, for all intents and purposes, on the basis of the new address.

The ratio worth taking away is narrower and sharper than “notice matters”: where the Registry has itself adopted an unofficial address in practice, it cannot retreat to the database at the moment of renewal.

That framing matters, because it tells you when the decision helps and when it does not. A proprietor who never got the Registry to use the new address at all — whose file shows the old address throughout — is in a materially weaker position than Mr. Singh was. The judgment rewards a documented pattern of the Registry corresponding to the current address; it is not a general licence to ignore Form TM-M.

Section 25(3): a duty on the Registrar, not the proprietor

The Court anchored its reasoning in Section 25(3) of the Trade Marks Act, 1999, which places the obligation to send a notice of expiration on the Registrar. Relying on its recent decision in Coldsmiths Retail Services Private Limited v. Registrar of Trade Marks, the Court reiterated that this obligation is substantive, not decorative: because non-renewal produces the drastic result of a registered mark lapsing and becoming open to third-party adoption, the mandate under Section 25(3) is sacrosanct and cannot be treated as a bare procedural step.

The Coldsmiths line goes further still, and this is the part that sits in tension with everyday practice. It holds that the duty rests on the Registrar and not on the proprietor — so the argument that the proprietor “could have” applied for renewal before expiry, or within the grace period, does not by itself defeat the claim. In other words, the statute does not convert the Registrar’s default into the proprietor’s fault.

We would sound a note of realism here. The doctrine allocates the legal duty to the Registrar; it does not repair the commercial damage of a lapse that is discovered years late. The distance between “who is legally obliged” and “who actually bears the loss” is precisely the gap that good portfolio management is meant to close.

Deemed service is not the same as dispatch

The Registry’s fallback — that the notice had also been sent to the proprietor’s own address, completing service — did not survive scrutiny, because there was no proof of delivery on the record. The Court declined to presume deemed service from dispatch alone. Where the statute imposes the duty and the consequence of failure is the loss of a property right, the Court was unwilling to build a fiction of service on an unproven posting.

Dispatch is not delivery. Where the price of “deemed service” is a lost registration, the evidential burden to show the notice actually reached its target sits with the party asserting it.

For proprietors, the practical corollary is important but limited: the absence of proof of delivery helped here because the Registry could not discharge its own burden. It is not an invitation to claim non-receipt as a matter of course.

Delay, laches and the writ remedy

The proprietor came to Court roughly 6.5 years after the renewal fell due. The Registry naturally argued delay and laches. The Court condoned the delay, relying on Coldsmiths (where a delay of about 1.5 to 2 years was condoned) and, in turn, on the Division Bench decision in Charanjiv Kumar Taneja (t/a Chirag Enterprises) v. Registrar of Trade Marks, where a delay of as much as 16 years was condoned in comparable circumstances.

The message is not that delay is costless. It is that, in this specific class of case — where the lapse flows from the Registrar’s own defective notice and the consequence is the loss of a registered mark — courts have been willing to look past significant delay and reach the merits. A proprietor sitting on a lapsed mark whose lapse traces to defective service is therefore not necessarily without a remedy under Article 226 of the Constitution.

The bigger fight that was postponed: Rules 58(2) and 58(3)

One part of the petition never got argued. The proprietor had also sought a declaration that Rules 58(2) and 58(3) of the Trade Marks Rules, 2017 — which govern the timelines for restoration after expiry — are ultra vires the Act. Those prayers were withdrawn, with liberty to raise the challenge in an appropriate petition.

That leaves a structural question open. Rule-level timelines that cut off restoration rights, where the parent Act arguably leaves more room, are exactly the kind of provision that invites a vires challenge. Brand owners with long-lapsed marks, and practitioners who advise them, should watch this space: the present decision resolves an individual injustice, but the harder, systemic question about the restoration window has been expressly deferred.

What this means for brand owners

The comfortable reading of this case is that the Registry must send an effective renewal notice. That is true, but it is the least useful lesson, because it is not something a proprietor can control. The lessons a proprietor can act on are these:

• File Form TM-M for every change of address or agent. Do not assume a Power of Attorney, a change of letterhead, or correspondence in an opposition updates the address for service. The Registry’s database field is separate, and RG-3 notices are generated from it automatically.
• Own your renewal docket. Section 25(3) places the legal duty on the Registrar, but as a matter of commercial risk you cannot rely on the RG-3 notice reaching you. This very mark fell due in 2019 and the problem surfaced only at the end of 2025.
• Reconcile the record whenever you change attorneys. On any agent change, confirm that the online status page the Registry relies on actually shows the current address for service — not merely that a Power of Attorney has been filed.
• A lapse is not always fatal. Where a lapse traces to defective notice, a writ remedy remains available and delay may be condoned — but this is remedial, contested litigation. It is far cheaper to docket correctly than to litigate a revival.
• For foreign proprietors and their counsel: if an Indian registration is held through a local agent, verify that the Indian address for service on the register is live. An agent’s office move can silently break the renewal chain, and the first sign of trouble may be a returned notice you never see.

In our experience, the vast majority of “lost” registrations are not lost on the merits at all — they are lost to an administrative gap that a disciplined docketing and record-reconciliation process would have caught. This judgment is a reminder that the law will sometimes rescue a proprietor from that gap; it is a better strategy not to fall into it.

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