Trademark Renewal Process in India

Meaning of Trademark Renewal:

The Trademark in general is used to differentiate the goods or services from one another enabling the consumers to recognise and differentiate the particular brand of products or services from other brands. Trademark Registration is given to a corporation for holding any emblem, expression, illustration, logo, name, slogan etc., which is used for the representation of products or services. This registration of the trademark is valid for a period of ten years in India. After the span of ten years, it needs to be renewed in order to hold legal protection and validity. It preserves those rights that are available only to the registered mark. The request for renewal is subject to certain basic conditions which need to be made within six months from the date of expiration.  The application of renewal should be made in form TM-R along with the prescribed fee. The time limit of six months has been framed in order to prevent the owner of the Registered Trademark from facing any unwanted hassles arising out of the late filing of the renewal application of the trademark. Even then, if the trademark owner fails to renew the trademark within the specified time the trademark will be removed from the trademark journal by serving notice to the trademark owner indicating the removal of the mark. This will happen within twelve months’ time from the expiration date. In between the period of six to twelve months after the trademark registration expired, the renewal can be ensured on payment of fine by the process called restoration. Therefore Renewal of Trademark is deemed paramount.

Need for Trademark Renewal:

Trademark Renewal render various advantages. This is due to the reason that registration of trademark renders a unique position to the goods and services and prevent infringement and also render restitution in case of occurrence of infringement. It enables the proprietor to alienate the trademark to some other person or corporation at their will. Licensing of the trademark is possible only when the proprietor has registered the trademark. In these circumstances, the registered trademark holds boundless pecuniary value.

Procedure for Trademark Renewal:

The registration of a trademark that is deemed stupendous will be valid only for the period of ten years. After this period it needs to be renewed in order to retain the registered trademark status quo. For this, the registrar of the trademark will issue a letter of reminder to the registered owner of the trademark six months prior to the date of expiration. The renewal of the trademark render two options:

• Renewal of trademark as it is i.e., without any modification;

                                     (Or)

• Renewal of trademark with amendments which is in the form of changes and alterations.

The application for trademark renewal will be filed in Form TM-R. This application need not only be filed by the registered owner of the trademark but also an authorised representative or an agent of the owner is eligible to file the application for renewal of the trademark. Subsequent to the filing of the application one has to check the status of the application filed. The status needs to be followed if any Opposition is raised by the public or third party towards the registration of the trademark. Thereafter if the application is approved the trademark will be published in the official gazette i.e., the “Trademark Journal”. Then the owner of the trademark has been endowed with the protection of their Trademark from Infringement for another ten years. The trademark is capable enough to get renewed indefinitely. The renewal may, in addition, be filed online which shall fundamentally prevent sufficient time and cash. But in some instances, where the trademark will expire and decline to fulfil the renewal deadlines. In such circumstances, there will arise a need to make travel for trademark restoration.

Duration to Renew a Trademark Registration:

• The application for renewal can be filed with a span of one year prior to the expiration date as per rules 57 and 28 of the Trademark Rules, 2017;

• The application for renewal can be filed within a span of six months prior to the date of expiration as per rules 63 and 64 of the Trademark Rules, 2022;

• The application for renewal can also be filed within a period of six months after the date of expiry.

Forms and Costs:

FORM TM-R:

• The Registered owner of the trademark can file an application for renewal in Form TM-R;

• Application for trademark renewal amidst surcharge of trademark registration can also be filed in Form TM-R.

FORM TM-18:

• The Affidavit supporting the statement of the case can be filed in Form TM-18.

Costs:

Physical Filing:

An amount of Rs.10,000/- will be incurred for the application filed by the registered proprietor in Form TM-R and an amount of Rs.5,000/- will be incurred additionally for renewal with a surcharge of registration in Trademarks Form TM-R

E-Filing:

An amount of Rs.9,000/- will be incurred for the application filed by the registered proprietor in Form TM-R and an amount of Rs.4500/- will be incurred additionally for renewal with a surcharge of registration in Trademarks Form TM-R.

Necessary documents for Trademark Renewal:

The following documents are deemed essential for the renewal of the trademark:

• A Photo Copy of the Trademark Registration Certificate;

• Power of Attorney for representing the applicant;

• Address proof and Photo Id of the applicant;

• Photo Copy of application form of the Trademark registration i.e., Form TM-A.

Trademark Renewal Checlist:

The following checklist must be dealt with before proceeding with trademark renewal:

• The trademark must be a registered one and should be possessed by the owner and the same should be subject to renewal;

• A Trademark search should be conducted to make sure there exists no identical trademark;

• Legal opinion should be obtained for an expedient solution if there exists any conflict of the trademark;

• Application for renewal should be prepared and it should thereby comply with appropriate conditions.

Consequences of Failure toTrademark Renewal:

The consequences will be relentless in case if the trademark fails to get renewed. The registrar shall remove the mark from the register if there is no application being filed for renewal or in case no prescribed renewal fee has been paid. But before removing the mark from the register, the register will advertise the intention of removal in the trademark journal. Failure to renew the trademark, not only affect the proprietor of the trademark but also the people who are assigned or licensed to the trademark and also weaken the legal position of the trademark.

Trademark registration renders the benefit of exclusiveness thereby preventing the claims of infringement. After all, the most significant benefit of trademark renewal is that it impedes other people from using your trademark. The Trademark Act is very much compassionate to the anguish of the owner of the trademark hence it has rendered another opportunity to get the trademark renewed within a span of six months after the expiration of trademark registration by the filing of prescribed form thereby paying the surcharge.

Restoration of Trademark:

The proprietor of the trademark shall apply for restoration in the case when the period for renewal has lapsed and no application is filed before the date of expiration. The application for restoration shall be filed by the proprietor along with the prescribed fee within six months to one year after the expiration of the registration. The registrar shall once again advertise the trademark after receiving the application for either restoration or renewal of the trademark.

The object of the advertisement is to persuade any objections raised by the people who can figure out the possibilities that the trademark should not be restored or renewed. If there are no oppositions being raised with the given time, then the mark will get entered in the register. The entry shall mention that the mark has been renewed for a period of another ten years. Thus, the process of renewal of trademark after the expiration period is typically called as restoration of the trademark in India.

Duration to Restore the Trademark:

The registered trademark shall be restored after a period of six months and within one year period from the expiration date of the last registration of the mark.

FORMS AND COSTS:

• Application for renewal along with surcharge or restoration and renewal of trademark shall be filed in Form TM-R;

• An Affidavit supporting the statement of the case can be filed in Form TM-18.

COST OF PHYSICAL FILING:

• The cost incurred for the filing of an application for renewal with surcharge or restoration and renewal of trademark is Rs.10,000/-

COST OF E-FILING:

• The cost incurred for the filing of an application for renewal with surcharge or restoration and renewal of trademark by e-filing is Rs.9,000/-

Compulsory notice from the Office of the Registrar of Trademark:

The deadline for the renewal of the trademark shall be intimated to the proprietor of the trademark by serving notice from the office of the registrar of the trademark. Even after the issuance of this notice if the proprietor fails to renew the trademark then the trademark will be removed from the register of the trademark. But howsoever the trademark shall be restored by the filing of application along with the prescribed fees.

How can Compliance Calendar LLP Help?

Compliance Calendar LLP plays a pivotal role in the trademark renewal process. At the initial stage itself, it renders the corporation with sufficient information regarding the existence of identical products or services for the prevention of infringement in trademarks. Thereafter it will stipulate the significance of trademark registration which render a unique and exclusive position to particular goods or services. CCL not only aid the corporation but also the general public or third party towards identification and differentiating the brands.

Compliance Calendar LLP give inputs to the corporation regarding the significance of trademark renewal. It educates people about the validity of the trademark registration and shows the significance of trademark renewal which binds the particular products or services thereby prevent the same from infringement. CCL will show the adverse effects if the trademark fails to renew the mark within the stipulated time and shows the consequences arising therefrom. Compliance Calendar LLP make sure that all compliance is duly meted out in order to avoid trademark infringement and to provide legal protection to the trademark. Have any queries, feel free to reach out to us at info@ccoffice.in or WhatsApp/Call at 9988424211