Trademark Renewal
Trademark Renewal
Trademark renewal is also called the trademark restoration. Basically the restoration which means extending the life of the brand or continuing the validity of the brand. Do You know that the oldest trademark registration in India is still in the market. It is likely to be the trademark for “Bass Pale Ale” which was registered on 30th November 1876, under the Class 32 for the beers and other alcoholic products. The trademark which was owned by the brewing company of Anheuser-Busch InBev. The trademark can be continued for over a century. In India it became one of the most popular brands in the Indian markets. All those are possible only if we renew the trademark once every 10 years. If we continuously renew our trademark which is popular in the markets, it becomes one of the most popular brands. So make your brand popular by renewing your trademark every 10 years.
What is a trademark renewal?
The process of trademark renewal stands as a pivotal safeguard for intellectual property. In India, over 400,000 trademark applications are filed annually. However, a substantial number of these applications may remain dormant. Therefore, in order to ensure that a trademark is used, it is necessary to renew the application, otherwise the trademark will be deemed to have lapsed. The validity period of a trademark in India is for a period of 10 years as per Section 25 of the Trade Marks Act, 1999. The introduction of the Trade Mark Rules, 2017, by the Government of India aimed to streamline application procedures, foster e-filing, establish benchmarks for applications, and simplify registration processes.
What are the benefits of renewing a trademark?
Continued protection:
Renewing a trademark ensures uninterrupted legal protection. The lapse and subsequent reapplication of a trademark introduces a significant break in legal safeguarding. During this period, the owner of the mark cannot bring an infringement action. Timely renewals, therefore, guarantee a constant defense against unwarranted legal challenges. A registered trademark empowers its owner to initiate legal action against unauthorized usage.
Brand value:
In this type of indemnity, the obligation for the indemnity should arise not from the written agreement but based on the circumstances or by the law. Eg : The principal and agent relationship. That every act of the agent that the principal is liable. If the agent left the delivery of goods to the owner. The principal is responsible for every act of the agent. In this situation there is no indemnity agreement between the parties but it is bound by the circumstances or by the law. This type of indemnity is said to be the implied indemnity agreement.
Financial Returns
Trademark holders wield exclusive authority to license or transfer their registered trademarks for financial gain. Neglecting timely renewal jeopardizes these financial benefits.
What is the procedure for renewing a registered trademark?
An application to renew a trade mark (FORM TM R) can be filed up to one year before the registration expires. Before the expiry of the trademark application, the Registrar will send a notice (O3 NOTICE) to the applicant at the address for service specified in the trademark application.
Steps Involved in Renewal of Trademark in India :
Application for Renewal: The renewal application (FORM TM R) can be submitted six months before or after expiry. The registration can be submitted directly at the Trademark Office or online through the website of the Indian Trademark Office.
Application Review: The Trademark Office scrutinizes the renewal application to make sure that all required information has been given with the renewal form for the above trademark.
Renewal certificate: A renewal certificate will be updated by the Trademark Office for your trademarked brand.
Duration to renew a Trademark:
The renewal can be filed within one year prior to the date of expiry as per rules 57 and 58 in Trade Mark rules 2017. The renewal can be filed within six months prior to the date of expiry as per rules 63 and 64 in Trade Mark rules 2002. The renewal can also be filed within six months after the date of expiry. Negligence to renew a mark within six months after the date of expiry will lead to the removal of the mark from the Register of Trademarks.
What happens when a trademark expires ?
If for any reason we are unable to renew a registered trademark before the expiry date, a restoration application will be filed at the same time as the renewal application and will be granted at the discretion of the Registrar. The maximum period for filing a restoration application is one year from the last day of renewal.
Trademark restoration:
The concept of restoration is outlined in Section 25(4) of the Trademark Act 1999. According to this section, if the owner wishes to reinstate a Trademark after the prescribed renewal period has lapsed, they can do so by submitting a restoration application. This application can be filed after 6 months but within 1 year from the expiration date.
Restoring a Trademark offers the proprietor an additional opportunity. It comes into play when the owner has failed to renew their Trademark within the specified timeframe.
Similar to Trademark renewal, the restoration process extends protection for another 10 years. However, during the restoration process, the registrar must take into account the interests of all concerned parties.
FAQ
FAQ
Can I file my Trademark Renewal Online application after the expiry term?
If your license has already expired, you have 30 days to renew it without incurring any fees. After 30 days, you will be charged the relevant fine if you wish to renew your license. If a license is not renewed within five years of its expiration, the holder must submit an application for a new one.
Is the Trademark Renewal Process and Trademark Restoration Process the Same?
No. In order to keep the Trademark registration permanent, an application for renewal will be filed in Form TM-R with a fee of ₹9000 within one year of the expiry of trademark registration. Whereas, trademark restoration is the process of bringing back the trademark, which is removed from the Register of trademark due to the absence of timely Trademark renewal.
What are the Documents Required for Trademark Registration Renewal Online?
- A duplicate of the registration document
- Copy of TM-A form (form used for the original form for registering the trademark)
- Proof of the applicant's identity and address
- The applicant may be given power of attorney if they are an authorized representative or agency.
What happens if the trademark is not renewed within the grace period?
If a trademark isn't renewed within this grace period, the Registrar will announce the trademark's removal in the official Trademark Journal, leading to a loss of all the rights and protections associated with that trademark.
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