Overview of Trademark Renewal:
A trademark is a unique mark, symbol, or label that distinguishes your product from those of your competitors and aids in its identification. The registration of a trademark is valid only for a period of 10 years. After which, it can be renewed from time to time. A registered trademark owner may apply to renew the mark before its validity expires. The trademark renewal will assist the owner in extending ownership of the trademark for an additional ten years.
In India, the process of trademark renewal must begin at least six months before the expiration date of the applicant’s trademark registration. The timely trademark renewal assists the authorized owner of a registered trademark in keeping the trademark perpetual and permanent.
Therefore, trademark renewal in India can be done as many times and for as many years as the registered trademark owner wishes to keep the status active and registered. Moreover, trademark renewal preserves rights only available to a registered mark. If the proprietor fails to renew the trademark, he shall lose all the protection that comes with registration.
For example, a registered trademark has the benefit of the legal presumption of ownership. That means that the burden of proof is on others to try and disprove your ownership.
Procedure for Trademark Renewal
A registered trademark is valid for ten years and must be renewed before expiration. The Registrar of trademarks will send you a letter 6 months before the expiration of the trademark. When it comes to renewing a trademark, you have two options:
Renew the trademark as it is, or renew the trademark with changes and alterations
i) The application for the renewal of a trademark is the form TM-R.
ii) Along with the application for the renewal, the proprietor has to pay renewal fees of Rs.9000.
iii) The application must be made by the registered trademark owner or an authorized agent of the owner.
iv) Professional assistance is recommended when filing an application for trademark renewal in India. Professional assistance will ensure that the trademark renewal is completed with ease and hassle-free.
Application Status Check
– After filing an application for trademark renewal, it is essential to check the status of the application on a regular basis until the Registrar processes it.
– Trademark renewal in India may require various time-bound responses or actions from the applicant of the registered Trademark from time to time.
Publication in the Trademark Journal
The Trademark Journal is an Official Gazette in the Trademarks Registry that states whether or not the Registry has accepted a trademark renewal application.
If the renewal request filed is acceptable, then trade marks registration renewed for a period of ten years is advertised in the Trademark Journal.
Benefits of Trademark Renewal:
Trademark renewal provides numerous benefits. This is because trademark registration grants a unique position to goods and services, prevents infringement, and provides restitution in the event of an infringement. It allows the proprietor to freely transfer the trademark to another person or corporation. Only after the proprietor has registered the trademark is it possible to license it. In these circumstances, the registered trademark has unlimited monetary value.
Some of the benefits of trademark renewal are listed below:
1. Protection from frivolous lawsuits
Trademark renewal in India on a regular basis will eliminate the possibility of frivolous litigation against the authorized owners of the trademark. The renewal makes it impossible for anyone other than the authorized owner of the trademark to claim its rights.
2. Brand Name Protection
Trademark renewal in India guarantees continuous and unhindered protection of the brand name from other market competitors. If the time period for filing an application for Renewal has passed, the brand name will lose its legal protection.
3. Extending Ownership Rights
The applicant is authorized to seek trademark infringement protection in India. The authorized owner’s exclusive rights over the registered Trademark are extended for a period of ten years following each trademark renewal in India.
4. Returns on Investment
The registered trademark owner in India has the sole right to assign or license the trademark to another person. A trademark assignment and license are given to someone else in exchange for monetary compensation to the authorized owner of the registered trademark. As a result, the owner can profit from the registered trademark in India.
Consequences of failure to renew the trademark
The consequences will be relentless if the trademark fails to renew. The registrar shall remove the mark from the register if no application is 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 affects the proprietor of the trademark and the people who are assigned or licensed to the trademark and weakens the trademark’s legal position.
A registered trademark has the benefit of exclusiveness. Trademark registration protects you from infringement claims. However, the most important benefit of renewal is that it deters other people from using your mark.
The Trademark Act is very sympathetic to the woes of the proprietor and has therefore provided another chance to renew the trademark within 6 months after the date of expiration of registration by filing a prescribed form and by paying the surcharge.
Restoration of Trademark
If in case the renewal period has lapsed and no application was filed prior to the expiration, then the proprietor can apply for restoration of the trademark. However, such an application has to be made from 6 months to 1 year after the expiration of such registration. The proprietor has to file a prescribed form to request restoration.
After receiving applications to renew or restore the trademark, the Registrar shall advertise the mark again. The purpose of the advertisement is to invite objections from people who have reason to believe that the trademark should not be renewed or restored. If there are no objections raised within the stipulated time, then the mark will be entered in the register. The entry shall specify that the mark has been renewed for a period of 10 years.
Duration to restore the trademark:
The registered trademark shall be restored after six months and within a year from the expiration date of the last registration of the mark.
i) Application for renewal along with surcharge or restoration and renewal of trademark shall be filed in Form TM-R;
ii) An Affidavit supporting the statement of the case can be filed in Form TM-R.
Compulsory Notice from the office of the registrar of trademark:
The deadline for the trademark renewal shall be intimated to the proprietor of the trademark by serving notice from the office of the trademark registrar. 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 filing the application along with the prescribed fees.
