Updated : June 21, 2024Process of Trademark Renewal in India
Overview : In this blog, we will explain the intricate trademark renewal process, explore the wide range of benefits trademark renewal has to offer, delve into details of the costs involved, and shed light on the severe consequences which arise due to non-renewal of a trademark within time.
In the vast world of trademarks, where brands strive for legal recognition and protection, trademark renewal stands tall as the most crucial requirement. It ensures the continued vitality and legal significance of your trademark after its registration has expired.
The Registration of a Trademark is valid for 10 Years from the date of application, that is, the effective date on which the first application for trademark registration was filed. Before the expiry of these 10 years, the concerned trademark needs to be renewed for its registration to continue. We have discussed the exact due dates for trademark renewal later in this blog. You must remember that with every renewal, the validity of a trademark’s registration extends for a period of another ten years, and there is no limit on the number of times you can renew your trademark.
Legal Provisions Regarding Trademark Renewal under Trademark Act,1999
Trademark renewal is a crucial process for the continued protection of Trademarks under the Trademark Act of 1999. The legal framework under the Act outlines the necessary steps and provisions regarding the same. In this section, we will explore the key legal aspects related to trademark renewal, including the renewal process, consequences of non-renewal, and the authority vested in the Central Government to establish rules for smooth trademark renewal procedures. Understanding these legal provisions is essential for brand owners to ensure their trademarks remain well-protected in the competitive markets of India.
1. Provision for Trademark Renewal (Section 25)
The Trade Marks Act, 1999, provides for the renewal of a registered trademark for a period of ten years from the date of expiration of the original registration or the last renewal. To initiate the renewal process, the registered proprietor must apply to the Registrar of TradeMarks within the prescribed time and in the prescribed manner. Upon receiving the application and payment of the prescribed fee, the Registrar will renew the registration for another ten-year term.
2. Removal of Registered Trademark Due to Non-Renewal (Section 25)
Before the expiration of the last registration of a trademark, the Registrar is required to send a notice to the registered proprietor regarding the date of expiration and the conditions for renewal. If the renewal conditions are not met within the prescribed time, the Registrar has the authority to remove the trade mark from the register. However, the Act provides a grace period of six months from the expiration date during which the proprietor can still renew the trademark by paying a surcharge along with the renewal fee.
Additionally, if a trademark has already been removed from the register due to non-payment of the renewal fee, the proprietor can apply for restoration within one year from the expiration of the last registration. The Registrar may restore the trademark and renew its registration upon receiving an application and payment of the prescribed fee, subject to the Registrar’s discretion on any conditions or limitations.3. Power of Central Government to Make Rules (Section 157)
The Central Government, through notification in the Official Gazette and after complying with the conditions of previous publication, has the authority to make rules to execute the provisions of the Trade Marks Act. These rules may include forms for the application of renewal and restoration, the time frame within which such applications should be made, and the corresponding fees and surcharges. Furthermore, the rules can define the time period for the Registrar to send notices and specify the manner in which such notices are to be delivered as mentioned under sub-section (3) of Section 25.
Process of Trademark Renewal in India
The Process of Trademark Renewal in India involves several steps to ensure the continued protection of your trademark. Here is a simplified breakdown of the trademark renewal process along with the required documents:
Step 1: Application Filing
Submit a renewal application to the Trademark Registry in Form TM-R. Include the following details:
- Trademark registration number
- Current status of the trademark
- Applicant’s contact information
Step 2: Verification and Examination
The Registry will verify the application and examine the trademark for any potential conflicts. It will also assess the renewal eligibility based on the validity period of the trademark and compliance with renewal requirements. If a conflict is found, the registry will raise objections and seek clarifications from the applicant. The clarification must be filed within the prescribed time frame.
Step 3: Publication in Trademark Journal
Once the objections are settled, the trademark renewal details will be published in the Trademark Journal for a period of 4 months. This allows for any third-party opposition to the trademark. If an opposition is raised, the applicant will have to reply within the prescribed period or the department will call a show cause hearing to resolve the issue.
Step 4: Issuance of Renewal Certificate
Upon successful completion of the publication period and resolution of any opposition, the Registry will issue the Trademark Renewal Certificate. This certificate confirms the renewed validity of your trademark for the next 10 years.
| S.No | Documents Required for Trademark Renewal |
|---|---|
| 1. | Renewal application in the prescribed format |
| 2. | Trademark registration certificate |
| 3. | Power of Attorney (if applicable) |
| 4. | Supporting documents of applicant’s identity and address proofs |
Due Date for filing of Trademark Renewal
- The application for Trademark Renewal must be filed before its expiry.
- You may be able to file the trademark renewal application one year prior to the expiry of its registration.
- However, the exact due date is on or within six months prior to the date of expiry of its Registration.
- In case the registration of the trademark has lapsed as it was not renewed before its expiry, it can be renewed within six months after its expiry with an additional surcharge in government fee of trademark renewal.
- If the trademark application is not renewed, before its expiry or with additional fee within six months after the expiry date, then the trademark registration gets cancelled.
- A Cancelled trademark can be restored if an application is filed within six months of cancellation.
Cost of Trademark Renewal
The government fee for Trademark Renewal is Rs 10,000 (for offline filing) and Rs.9,000 for (for online filing) if the application for the renewal is filed before the expiry of the trademark. If the application is filed within 6 months after the expiry, the applicable surcharge over and above the renewal fees would be Rs.4,500 per class (for e-filing) and Rs.5,000 per class (for offline filing).
Consequences of Non-Renewal of Trademark
If the trademark is not renewed within its due date then it can still be renewed within six months of grace period from the expiry of the registration. However, in that case, you have to pay an additional fee as discussed above. In case you miss renewing the trademark even within the grace period then the mark gets cancelled. A cancelled mark can be restored within one year from the date of its expiry with a restoration fee of Rs.9,000 (for e-filing) and Rs.10,000 (for offline filing) per class charged over and above the normal renewal fees.
Trademark Renewal Benefits
There are three significant benefits of having a trademark and continuously renewing it.
- The registered trademark provides legal protection of stopping anyone from copying the business identity by filing a suit of infringement and can also seek compensation for illegal usage of the brands.
- Trademarks are the most valuable intangible asset that a company can have. You may earn a substantial license fee once you acquire significant goodwill on your brand.
- The most important of all the benefits is the unique identity that your brand will bring to you. It is worth protecting and renewing.
Conclusion
In conclusion, trademark renewal in India is a vital step for brand owners to protect their legal rights and maintain the distinctiveness of their trademarks. By adhering to the overall requirements of trademark renewal process, including timely application filing and submission of required documents, brands can ensure ongoing protection for an additional 10-year period. Neglecting the trademark renewal process, however, can result in loss of legal safeguarding and vulnerability to infringement. Conversely, timely renewal offers benefits like legal recourse against infringement, licensing opportunities, and the preservation of a unique brand identity. By understanding and embracing trademark renewal process, brand owners can secure their intellectual property and thrive in a competitive market.
