Trademark Renewal in India

Trademark Renewal Provisions Under the Trade Marks Act, 1999

1. 1. Section 25(1) of the Trade Marks Act, 1999 – Trademark Validity and Renewal

   • A registered trademark is valid for 10 years from the date of application.
   • The trademark owner must apply for renewal before the expiration of the 10-year period to continue enjoying exclusive rights.
   • Renewal extends the trademark protection for another 10 years.

   2. Rule 57 of the Trade Marks Rules, 2017 – Application for Renewal

   • The renewal application must be filed using Form TM-R before the expiration of the trademark.
   • The prescribed renewal fee must be paid as per the official fee schedule.

   3. Rule 58 of the Trade Marks Rules, 2017 – Renewal with Surcharge (Grace Period)

   • If renewal is not done before expiry, the owner can still renew it within six months from the expiration date by paying a surcharge fee.
   • If the renewal is not completed within this period, the trademark may be removed from the register.

   4. Rule 60 of the Trade Marks Rules, 2017 – Advertisement of Renewal

   • After successful renewal, the Registrar will advertise the renewal in the Trademark Journal for public awareness.
   • This ensures that the renewal has been properly recorded and can be accessed by third parties.

Trademark Renewal Procedure in India

The process of renewing a trademark in India involves the following steps:

Step 1: Application Submission (TM-R Form)

• Fill out and submit Form TM-R to the Trademark Registry.
• The application can be filed by the trademark owner or an authorized agent.
• Required details:
• Trademark Registration Number
• Owner’s Details
• Trademark Status
• Renewal Type (with or without changes)

Step 2: Scrutiny and Examination

• The Trademark Registry reviews the application to check for compliance with renewal guidelines.
• If any errors or discrepancies are found, a notice is issued to the applicant.

Step 3: Publication in Trademark Journal

• After approval, the renewed trademark is published in the Trademark Journal.
• A 4-month opposition period is allowed for third parties to raise objections.
• If objections arise, the applicant must respond within the given timeframe.

Step 4: Issuance of Trademark Renewal Certificate

• If no objections are raised, or if objections are resolved in favor of the applicant, the Trademark Renewal Certificate is issued.
• The renewed trademark is valid for another 10 years.

Trademark Renewal Deadlines and Late Renewal Fees

• Timelines for Renewal

  • The renewal application should be filed before the trademark expires.

  • The ideal time to apply for renewal is one year before expiration.

  • The deadline for renewal is six months before the expiration date.

  Late Renewal Fees

  • If the trademark is not renewed on time, a 6-month grace period is available with a surcharge fee.

  • If renewal is still not done, the trademark may be removed from the registry.

  • Restoration is possible within one year after expiration but requires an additional penalty fee.

  • Where the proprietor of a trademark fails to renew the trademark prior to the expiry of the registration, there is a provision wherein an application under Form TM-R can still be filed within six months from the expiration of the registration of the trademark with a surcharge of INR 4500 per class in addition to the appropriate renewal fee.However, if no application is filed within the stipulated six months grace period after the expiry of the registration of the trademark, then the trademark is deemed to have expired and shall accordingly be removed from the register

  • The applicant must pay the official government restoration fee, which consists of:

  • Renewal Fee: Form TM-R with an official fee of Rs. 9000 per class

  • Late Renewal Surcharge (if within grace period): Form TM-R with an official fee of surcharge of Rs.4500 per class + renewal fee of Rs.9000 per class

  • Restoration Fee: Form TM-R with an official fee of Rs. 9000 per class + renewal fee of Rs. 9000 per class

Consequences of Not Filing Trademark Renewal

Failing to renew a registered trademark within the prescribed timeline can lead to several legal and business repercussions. Below are the valid and most relevant consequences of not filing a trademark renewal:

1. Loss of Legal Protection

• A trademark grants exclusive rights to its owner for 10 years. If not renewed, these rights expire, and the trademark is no longer legally protected.
• The owner loses the ability to take legal action against infringement or unauthorized use of the mark.

2. Removal from the Trademark Register

• Under Section 25(3) of the Trade Marks Act, 1999, if a trademark is not renewed within the six-month grace period, the Registrar may remove it from the Trademark Register.
• Once removed, the trademark becomes available for public use, allowing third parties to claim it.

3. Risk of Brand Identity Loss

• If the trademark is removed, competitors or other businesses may register a similar or identical mark.
• This can lead to loss of brand recognition, market presence, and customer trust.

4. Need for Costly Restoration Process

• If the trademark is removed, the owner must apply for restoration within one year under Rule 59 of the Trade Marks Rules, 2017.
• Restoration involves additional costs, legal formalities, and potential Trademark objections from third parties.

5. Potential Business Disruptions

• If a company loses its trademark, it may need to rebrand its products, packaging, and marketing materials.
• Changing a brand name after years of recognition can lead to customer confusion and loss of goodwill.

6. Increased Risk of Trademark Squatting

• Trademark squatters or opportunistic businesses may register the expired mark and demand payment or legal action from the original owner.
• Recovering a lapsed trademark from another party may require expensive litigation.

7. Loss of Licensing and Franchise Agreements

• If a trademark is part of a licensing or franchising agreement, failure to renew it may invalidate the agreement.
• This can lead to financial losses and disputes with licensees or franchisees.

Restoration Process Of Trademark

• The applicant must pay the official government restoration fee, which consists of:
  • Renewal Fee: Form TM-R with an official fee of Rs. 9000 per class
  • Late Renewal Surcharge (if within grace period): Form TM-R with an official fee of surcharge of Rs.4500 per class + renewal fee of Rs.9000 per class
  • Restoration Fee: Form TM-R with an official fee of Rs. 9000 per class + renewal fee of Rs. 9000 per class
• Mode of Payment: The fee can be paid via Net Banking, Credit/Debit Card, or Demand Draft.

• Declaration of Ownership (if the company structure has changed)
• Board Resolution (if a corporate entity is filing)
• Affidavit supporting the restoration request

Suggestions for Trademark renewable 

Renewing a trademark on time is crucial for businesses to maintain their brand identity and legal rights. To avoid last-minute complications, it is advisable to apply for renewal well before the expiry date, ideally six months in advance. Keeping track of trademark renewal deadlines is essential, as missing them could lead to additional surcharge fees or even removal from the register. Businesses should also use this renewal opportunity to assess whether any modifications, such as updating the class of goods or services, are necessary. Additionally, conducting a fresh trademark search before renewal ensures that the brand remains distinctive and is not facing potential conflicts.

How Compliance Calendar LLP Can Help with Trademark Renewal?