A trademark is any sign capable of distinguishing one enterprise’s identity from another. Here’s what you need to know about the renewal of the trademark in India.
A trademark is a symbol that can be anything from a name, logo, picture, word, phrase, label, or sound. Registering a trademark for your company is your first step in protecting your brand. Once registered, it is considered a valuable asset in your company’s balance sheet as a trademark, and it can also imply goodwill.
A trademark is valid for ten years after it is registered, after which it must get renewed if you want to keep it.
Let’s get in-depth and learn more about trademarks and the renewal of the trademark in India.
What is a trademark renewal?
In India, trademark registration is valid for ten years, and after ten years, it needs to be renewed. Renewal of the trademark in India is subject to the basic condition that the request is made within 6 months of the expiry date in our country.
It is standard practice; the registrar’s Office informs the trademark owner that the trademark registration must get updated within 6 months of the expiration date to avoid the owner having to face the unnecessary hassles associated with late filing of the trademark renewal application.
- Msme/Small Business/Individual Application:
The government charges INR 4,500/- for the electronic renewal of a single class mark and INR 5,000/- for the physical maintenance of a single class tag.
- Applicant Company:
The government fee for electronic registration of a single class trademark is INR 9,000/–, whereas the fee for physical completion of a single class application is INR 10,000/.
If the trademark registrar’s Office letter is not updated or responded to, the trademark owner receives a notice indicating that the mark will get removed from the trademark Journal if the owner fails to renew on time.
Duration to renew a trademark
Once registered, a trademark application must get renewed every ten years, or the trademark will be removed from the register of trademarks. Renewal of the trademark in India application must be made using Form TM-R and the prescribed fee of INR 9000 per class within one (1) year of the expiry of the mark’s registration. Failure to submit the required fee with the Form TM-R may result in the removal of the trademark from the Register.
If no application for renewal of a trademark is filed with the prescribed fee, the registrar shall notify the trademark proprietor at the specified service address, informing him or her of the renewal deadline. This notice must be sent no later than 6 months before the registration expires. It is important to note that the trademark can only be removed from the register after the registrar has served such notice on the proprietor.
If a trademark is due for renewal, it can get registered within six months before or after the renewal due date. The trademark registration may get renewed by paying the prescribed renewal fee within six months after the actual date of registration.
If the renewal fee is not paid within the specified time frame, the trademark will be removed from the trademarks register following publication in the trademarks Journal.
How to renew a trademark in India?
To renew an expiring trademark, either the owner or an authorised agent can carry out all of the steps outlined in the procedure below:
Application submission
- To begin, the owner or authorised agent must file the application form TM-R, along with the documents and fees. The detailed procedure for filling out the TM-R Form is on the government’s website.
- If the owner applies within 6 months of the trademark’s expiration, additional surcharge fees must be paid in addition to the renewal official fees, as discussed above.
- Because the renewal of the trademark in India takes months, the filing should begin 6 months before the expiration date.
- However, 1-3 months before the expiration date, the trademark registrar must send an RG – 3 notice to the proprietor informing them of the upcoming expiration date. The notice is required, and if the trademark office does not send it, the registrar will be unable to strike the expired trademark from the registers.
Check the application’s status.
- After submitting the application form, the owner needs to regularly check the application status, as there are various time-bound actions that the applicant must perform from the trademark registry.
- The continuous status check process must be followed until the registry has completed the application process, including formality checking of the application’s quality and other examinations.
Publication in the trademark Journal
- Once the trademark registrar has completed the examination process and accepted the application, the trademark will be advertised in the trademark Journal, an Official Gazette listing accepted and objectionable trademarks.
- As a third party, the public can file any objections to the trademark. The trademark will be entered into the register if no objections are raised after the prescribed period.
- When a trademark gets published in the Register, it indicates that it has been renewed for another ten years.
The consequences of failing to renew a trademark
- The consequences of failing for the renewal of trademark in India are severe. If the proprietor fails to file an application within the timeframe specified or fails to pay the required fees, the registrar has the authority to remove the trademark from the Register.
- The initial condition shall be followed only if the registrar has served prior notice by advertising the notice, indicating the intention to remove the trademark from the register in the trademark Journal.
- On removing the trademark from the register, the owner loses all rights to the mark. The owner’s rights would negate the right to file for infringement and protect the brand from competing businesses.
- However, the trademark office has been gracious enough to offer a second chance through restoration. If the owner fails to renew the trademark within 6 months of its expiration, the owner can file for trademark restoration after 6 months but within 1 year of the trademark’s expiration.
Restoration of trademark and its importance
Section 25(4) of the Trademark Act 1999 defines the concept of restoration. If the owner wishes to restore a trademark after the prescribed period for renewing it has expired, he can file a restoration application after 6 months but not after 1 year of the trademark expiration date.
The restoration of the trademark provides the proprietor with another window of opportunity. If the owner fails to renew their trademark, the trademark registry offers another chance. As a result, it is carried out after the owner fails to renew the trademark.
Like the renewal of the trademark in India, trademark restoration protects for an additional ten years. In addition to the restoration process, the registrar must ensure that the interests of all affected parties are considered.
Requirements for trademark restoration
The restoration of the trademark, like the renewal requirements, requires certain documents and an application form to be filed with it.
Documents for trademark restoration
The following documents are required for trademark restoration:
- A copy of the registration certificate for the trademark.
- If the applicant is an authorised representative or agent, a power of attorney is required.
- A copy of the trademark registration application form (Form TM-A used to file the original application for registering a trademark.)
- In addition, a statement stating the reasons or grounds for failing to renew the trademark within the prescribed period should be presented.
Procedure to be followed for the trademark restoration
To restore the expired trademark, either the owner or an authorised agent can perform all of the steps outlined in the procedure below:
Application submission
- To begin, the owner or authorised agent must file the application form TM-R, along with the documents and fees.
- The application must get accompanied by a statement explaining why the expired/expired trademark was not renewed.
- The restoration application must be filed within one year of the expiration date but no later than six months.
Check the application’s status.
- After submitting the application form, the owner needs to regularly check the application status, as there are various time-bound actions that the applicant must perform from the trademark registry.
- The continuous status check process must be followed until the registry has completed the application process, including formality checking of the application’s quality and other examinations.
Advertisement in the Trademark Journal.
- While reviewing the restoration application, the Registrar should consider the interests of other affected individuals.
- Once the trademark registrar has completed the examination process and accepted the application, the Trademark will be advertised in the Trademark Journal, an Official Gazette listing accepted and objectionable trademarks.
- As a third party, the public can file any objections to the Trademark. The Trademark will be entered into the trademark register if no objections are raised after the prescribed period.
- If a trademark is published in the Register, the Trademark has been restored for another ten years.
Consequences of not restoring the Trademark
- Restoring the Trademark was the last opportunity provided to the proprietor, and the trademark registry provided no other window. The consequences of failing to restore the Trademark are severe. If the proprietor fails to file the restoration application within the specified timeframe or fails to pay the required fees, the registrar must remove the Trademark from the Register.
- The initial condition shall be followed only if the registrar has served prior notice by advertising the notice, indicating the intention to remove the Trademark from the register in the Trademark Journal.
- When a trademark is removed from the Register, the owner loses all rights to the mark. The owner’s rights would negate the right to file for infringement and protect the brand from competing businesses.
Advantages of trademark renewal
The following are the advantages of the renewal of the trademark in India:
Extension ownership rights
Registering a trademark for a business asserts exclusive control over one’s brand identity. With each renewal of the trademark in India, the exclusive right to a trademark is extended for ten years. Furthermore, by extending trademark registration, you remain protected against any infringement on your brand’s identity. Moreover, the goodwill built up by your brand name over time gets preserved.
Defence against litigation
With each trademark renewal, you maintain continuous protection against frivolous litigation. Furthermore, timely trademark renewal makes it impossible for others to claim unwarranted rights to your trademark. You can also sue other people/companies for unauthorised use of your trademark if it still gets registered in your name.
Attracting top talent
When you renew your trademark, it continues to spread your organisation’s vision, image, and unique characteristics for an extended period. Naturally, bright young minds want to be associated with such prestigious brands.
Furthermore, if your organisation has a positive brand image, talented human resources will be more inclined to work for you. In some ways, renewing your trademark regularly will ultimately reduce the cost of sourcing and retaining quality labour.
Litigation possibilities reduced
If you follow the rules and renew your trademark on time, you can have continuous trademark protection without the risk of litigation. The renewal of trademarks makes it impossible for anyone other than the trademark owner to claim rights to the registered mark.
Brand name protection
Renewal of a trademark guarantees uninterrupted and continuous brand name protection and security protection. Failing to renew the trademark results in the loss of a legal shield for the brand name.
Returns on investment
The registered trademark owner in India has the sole right to assign or licence the trademark to another person. A trademark assignment and licence are given to anyone else in exchange for economic compensation to the authorised owner of the registered trademark. As a result, the owner can benefit from the registered trademark in India.
To Conclude:
Trademarks are an emerging field in Intellectual Property Rights. The ability of a business’s symbol or word to be distinguished from other enterprises defines the role of a trademark. Trademark registration protects the owner’s brand from all potential damages. As a result, it is good to renew and restore the trademark.
A trademark is only valid for ten years, and if the proprietor is interested, he or she may renew the contract indefinitely for subsequent periods. The renewal of the trademark in India and the registry has been liberal enough to allow for multiple opportunities.
Even if the owner does not renew his trademark, he can apply for restoration. As a result, the owner should take advantage of the registry’s benefits to indefinitely protect their brands from potential infringements.
