Introduction
A trademark is an invaluable asset for a business and registration of the trademark holds exclusive rights over their brand, goodwill and reputation over the mark and goods/services under the mark, making it distinguishable from other competitors in the market. The Registrar of the trademark registry is empowered to register the mark based on the procedure provided in the Trade Marks Act, 1999 (Act). However, similar to other legal rights, the registration of a trademark is not perpetual and requires timely renewal for continuation of the validity to safeguard the trademark. The continuous protection of the legal rights granted by a trademark registration is the vision of the concept of trademark renewal. The owner loses the sole right to use the mark in commerce if fail to renew the registration of the mark. It would then open the door for rivals to use a mark that is similar in business, which might confuse customers and damage the brand's reputation. In failing to renew the registration of the mark, the mark will be removed from the register of the trademark registry by the registrar; however, limited to time period, the Trade Marks Act, 1999 provides opportunity for restoration of the mark as well after removal from the register.
Duration of Trademark Registration
As per Section 25(1) of the Act, the registration of the trade mark is valid for the period of 10 years beginning from the date of application and can be renewed after every 10 year in accordance with sub-clause 2 of Section 25of the Act.
Renewal of Trademark Registration
The legal extension of your trademark registration past its original validity period is known as trademark renewal. The majority of countries, including the US, EU, and India, give trademark owners the opportunity to renew their marks on a regular basis, commonly, every ten years.
The initial validity of a trademark is ten years from the date of registration. To maintain the trademark's protection, the owner must ultimately submit a renewal application to the appropriate intellectual property office.
Section 25(2) of the Act states that "The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration."
Before the expiry of the registration of a trademark, the Registrar will send a notice to a registered proprietor. The notice shall include the date by which the registration is about to expire and the details for renewal, including payment of the renewal fee. Unless the conditions for renewal by the trademark owner are met during the stipulated time, the Registrar may delete the trademark from the register as per sub-clause 3 of the Section 25of the Act.
However, if the renewal application along with the fee (and a surcharge) is filed within six months of the expiration of the registration, the trademark will not be removed from the register and the renewal will be approved.
Process of Trade Mark Renewal
The application for the renewal of a trademark shall be filed in the Form TM-R to trademark registry along with the prescribed fee i.e. INR 9,000 for online filing and INR 10,000 for physical filing of the form for renewal.
Renewal eligibility is scrutinized based on the trademark's remaining validity and adherence to renewal prerequisites. Certain documents will be mandatorily required for renewal such as copy of trademark registration, copy of Form TM-A, identity and address proof of the applicant and power of attorney in case applicant is an authorized agent.
Once all the scrutiny and concerns are addressed, details concerning the renewed trademark are publicized in the Trademark Journal for 4 months allowing third parties to express any objections.
After the designated publication duration and the amicable resolution of potential disputes, the Registry presents the Trademark Renewal Certificate.
Restoration of Trademark
In case where the proprietor of the trademark skips or misses out the timely renewal due to some reason and the Registrar removes the mark, Section 25(4)of the Act allows the restoration of such mark by the Registrar. This provision states that the Registrar may restore such trademark within one year of the expiry of the registered trademark. Restoration of a trademark includes an additional fee over the renewal fee of 10,000 rupees in case of physical filing, or an additional 9,000 rupees if followed online filing.
Conclusion
Registration of the trademark awards the holder of the trademark many rights that are protected by law. Failing to renew a trademark can leave you vulnerable to infringement and lose your legal protection. On the other hand, prompt renewal provides advantages like the protection of a distinctive brand identity, licensing opportunities, and legal recourse against infringement. Brand owners can protect their intellectual property and prosper in a cutthroat market by comprehending and embracing the trademark renewal process.
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