A trademark is a valuable asset, serving as a unique identifier for goods or services offered by a business. In India, the registration of a trademark is valid for 10 years. To maintain exclusive rights, the trademark owner must renew the registration every 10 years. This article outlines the process of trademark renewal in India, key legal requirements, and how failure to renew can affect the rights of the owner.
Why Trademark Renewal is Important?
Renewing a trademark ensures the continuous legal protection of your intellectual property. Failure to renew a trademark can result in its removal from the register, leading to a loss of exclusive rights. This may allow competitors to use the same or a similar mark, which can potentially damage your brand’s reputation and market position.
Under Section 25 of the Trade Marks Act, 1999, a trademark can be renewed for successive periods of 10 years. To renew a trademark, the registered proprietor (or their authorized agent) must submit an application in the prescribed manner within the designated period, along with the payment of renewal fees.
- Application by Registered Proprietor:
The renewal application must be made by the registered proprietor. This legal requirement was emphasized in the case of Oswal Hosiery Industries vs Union of India (2012), where the court held that a licensee could not file for the renewal of a trademark. Only the registered proprietor or an authorized agent may apply for renewal.Â
- Mandatory Renewal Period: The renewal must be filed within the stipulated time before the expiration of the existing registration. According to Section 25(2), this renewal extends the validity of the trademark for another 10 years.
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- Form and Fees: The renewal application must be submitted in the prescribed Form TMR along with the required renewal fees. It is important to pay the fees in full to avoid complications, such as the removal of the trademark from the registry.
After the trademark’s registration period nears its expiration, the Trademark Registry takes proactive steps to notify the proprietor and ensure that the mark is renewed in time. However, if the renewal is not completed, the Registry can remove the trademark from the register, leading to the loss of rights. Thankfully, even if a trademark is removed, there are provisions for its restoration, allowing the owner to regain their rights within certain time limits. Here’s a detailed look at the process for renewal, removal, and restoration of a trademark.
- Filing Before Expiration: The application for trademark renewal may be filed within one year prior to the expiration date of the trademark.
- Reminder Notice from Registry: The Trademark Registry will send a reminder notice (Form RG-3) to the registered proprietor within six months before the trademark’s expiration, notifying them of the approaching deadline.
- Removal from Register: If the renewal fee is not paid by the expiration date, the Trademark Registry has the authority to remove the trademark from the register.
- Late Renewal with Surcharge: If the trademark has not been removed from the register, the renewal application may still be filed within six months after the expiration date. However, this requires payment of the renewal fee along with a surcharge.
- Restoration of removed Trademark: If the trademark has been removed from the register, an application for its restoration can be filed within one year from the expiration date. This application must include the required restoration and renewal fees.
If a trademark is removed from the register due to non-payment of renewal fees, the proprietor loses all exclusive rights to the mark. In such a case, the owner would need to submit a fresh trademark application. This could lead to challenges, such as the mark being deemed non-distinctive or being already in use by another party.
The loss of protection can be a significant setback, especially if the brand has built substantial goodwill and recognition in the market. Therefore, timely renewal is critical to safeguard the intellectual property rights associated with your trademark.
Trademark renewal is vital to maintain exclusive rights, protect your brand’s integrity, and avoid potential legal complications. Failure to renew may lead to the loss of these rights, requiring additional time, effort, and resources to regain protection. At Legal Terminus, we ensure that trademark renewals are completed on time and in compliance with all legal requirements. Our team of experienced professionals handles everything from filing applications to following up with the Trademark Registry, ensuring that your intellectual property remains protected while you focus on growing your business.
The information provided in this article is for general informational purposes only and does not constitute legal advice. For advice tailored to your specific circumstances, it is recommended to consult a qualified legal professional. Legal Terminus is not liable for any actions taken based on the content of this article
Regards
CS Shipra MishraÂ
(B. Com, LL.B, FCS, Insolvency Professional, Registered TM Agent)
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