Registrar Cannot Refuse Renewal of a Trade Mark Still on the Register: Madras HC

On October 1, 2026, the Hon’ble Madras High Court in R. Booma Rani v. The Registrar of Trade Marks [WP(IPD) No. 14 of 2026] held that where a trade mark is registered after its first renewal date has passed, the Registrar cannot refuse a renewal application merely because the six-month period under Rule 58(3) of the Trade Marks Rules, 2017 (the Rules), has expired, so long as the mark has not been removed from the Register.

The petitioner applied to register the mark “THOTHA” (Hindi label) for safety matches in Class 34 on February 20, 2007. Opposition proceedings remained pending for about thirteen years, and the registration certificate was issued only on February 7, 2023. By then, the mark’s first ten-year term, counted from the date of application, had already expired on February 20, 2017. When the petitioner tried to renew the mark in September 2025, the Registry’s portal blocked the application, and the Registry took the position that the Rule 58(3) period had expired and that it had no power to condone the delay.

Rule 58(3) provides that where a mark is registered after its renewal date, it may be renewed by paying the fee within six months of actual registration, failing which the Registrar shall, subject to Rule 60, remove it from the Register. The Court held that expiry of the six-month period and removal from the Register are distinct. Removal is a separate step that the Registrar must take and advertise in the Journal under Rule 59, and it is the only consequence Rule 58(3) attaches to non-payment. Until that step is taken, the mark remains registered. Since Rule 57(1) fixes only the earliest date for renewal, not the last, the Court, following Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks (2024:MHC:3109), held that a renewal application may be made at any time after that date, so long as the mark has not been removed.

As the Registrar had not removed the mark more than three and a half years later, the Court held that it could not refuse the petitioner’s renewal fee and that the portal message was not an order under the Trade Marks Act, 1999. The Court clarified that it was not condoning delay but holding only that no time bar operates against renewal of a mark that is still on the Register. Its conclusion did not depend on the petitioner’s argument that the six months ran from receipt of the certificate, since Rule 58(3) counts from the actual date of registration.

The petition was allowed. The petitioner was permitted to file Form TM-R within four weeks of receiving a copy of the order, and the Registry was directed to accept it online or physically and, if otherwise in order, renew the registration for the period from February 20, 2017, to February 20, 2027, without removing the mark in the meantime.