Trademark renewals in India

Under the Trademark Act, 1999, a trademark, once registered is granted protection for a period of 10 years. For the aforesaid period, the trademark holder will have the right of exclusive use, right to assign the trademark, right to seek statutory remedy against infringement, right to correct the register and so on. However, on the expiry of the 10 years, the registered proprietor will lose all such rights and the trademark will be abandoned. As a result, the user must be cautious of the deadlines and accordingly renew the trademark in advance.

When is a trademark renewed?

Before six months to the expiry of a trademark which has enjoyed the tenure of 10 years, the Trademark Registry opens a window for the renewal of the trademark. By renewing the trademark, the proprietor continues to enjoy the same rights granted for its earlier term.

Process of Trademark Renewal

Step 1- Submitting the application for renewal

To initiate the renewal procedure, the proprietor must formally submit an application to the Registrar of Trademarks, ensuring that is has been done within the stipulated time frame and by meeting the requirements.

Once the application is submitted along with the mandatory fee, the Registrar will extend the trademark’s registration for another ten years. A detailed procedure has been provided hereunder-

Once the six months window opens before a trademark eventually expires, the proprietor must decide between two options:
To renew the trademark as is; or
To apply afresh for registration of the trademark with alterations.

Once it has been decided by the proprietor that his trademark should be renewed, the application for renewal, i.e., Form TM-R must be filled out and submitted to the registry.
The form should be accompanied with the payment of fees. The fees for renewal of registration of a trademark are INR 9,000 per mark per class basis if the renewal is done online.
Following documents should also be submitted while filing for renewal of the trademark-
A Power of Attorney in favour of the attorney – if the applicant is representing the trademark owner; and
Certified copy of the assignment / acquisition agreement / name change document / address change document – if there has been change in the proprietor / any details thereof.

Step 2 – Scrutiny by the Registrar

Once the renewal application is filed with the Trade Marks Registry, the Registrar conducts a scrutiny and reviews the application. In case of any discrepancies, the Registry will notify its concerns, providing the registered proprietor with an opportunity to respond and supplement his renewal application with additional documents, within a stipulated time frame.

Step 3 – Grant of the Renewal Certificate

Post the scrutiny of the documentation (and compliance by the registered proprietor), the Registry issues Trademark Renewal Certificate. This document is very important as it grants the renewed status of your trademark. As a result, the trademark is granted protection for another 10 years.

What can be done if the proprietor misses the renewal deadline?

Before a registered trademark expires, the Registrar must notify the trademark owner about the expiry and the terms for its renewal. If these renewal terms aren’t met within the designated time frame, the Registrar possesses the right to strike the trademark off the register.

The Trade Marks Rules prescribe a 6 months grace period if the proprietor has not applied for renewal of the trademark. During this period, the proprietor can pay surcharge fee of INR 4,500, in addition to the regular fee to renew the trademark.

Moreover, in cases where a trademark has been delisted due to the non-settlement of the renewal charge, the proprietor can formally request for restoration of the trademark. According to Section 25(4) of the Trademark Act, 1999, one can file an application and pay the additional fee of INR 4,500, to request restoration. However, this process can only be done within a year of the registered trademark’s expiration date.

Common pitfalls during renewal of trademark

There are several pitfalls that individuals and businesses may encounter during the trademark renewal process. It’s important to be aware of these pitfalls to ensure a smooth renewal process. Some of the common pitfalls encountered are-

1) Failure to meet renewal deadlines

This is by far one of the most common pitfalls with respect to trademark renewal. It is very important to meet deadlines as that could potentially result in the proprietor losing his exclusive rights granted by a registered trademark. One should keep a check on the status of the trademark, especially when it is nearing its expiry period so as to not miss any deadline. Generally, a firm specializing in IP portfolio can be given a charge of maintaining your trademark portfolio, managing such deadlines and take relevant actions in time.

2) Incorrect renewal application form

Filing out the wrong or outdated form can lead to complications. Always ensure that the correct form is used. In this case, the form for trademark renewal is TM-R.

3) Failure to update information of the trademark

The trademark Registrar gives an option to the user to update or modify the details of the trademark during its renewal. Ensure that the goods and services listed in the renewal accurately reflect your current business activities. It is crucial to update this information during renewal as it could raise objections by the Registrar or by the third parties.

Practical implications of failing to renew a trademark

Not renewing a trademark has severe implications like:

Removal from the Register

If the trademark is not renewed within time, the Registrar will move forward to striking off the trademark from the registry. This means that the proprietor loses all his rights to exploit the trademark in commercial activities.

Emergence of similar trademarks

If a trademark is invalidated due to non-renewal, it is as good as a non-registered mark. In such case, various businesses could try to ride upon the proprietor’s brand name and reputation by adopting similar or deceptively similar trademarks. It basically eliminates the benefit of exclusivity and dilutes protection against infringement claims.

Conclusion

To sum up, renewing a trademark offers advantages for its holder with respect to legal protection and rights that are upheld by the law, aid in guarding against trademark infringement and right to transfer the trademark to another party. Trademark renewal must be filed on time before the expiry of the 10 years or at the most within 6 months after the expiration of the trademark. Only upon the renewal of such trademark can the proprietor avail the protection granted.

Article contributed by Ms. Eesha Parande.