Introduction

A Trademark is a recognizable word, sign, phrase or a symbol that denotes a specific product and legally differentiates that product from the rest of the similar products in the market. It helps the customer exclusively identify a product as belonging to a particular company and recognize the company’s ownership of the brand.

The process through which a trademark is recorded in the Register of Trademarks is referred to as registration.  The owner of the trademark can apply to the trademark registry (jurisdiction is decided based on the principal office of the business. The registration procedure in India is based on the ‘first to file’ system. It is therefore important that the rights holder applies for the registration of its mark as soon as possible. The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services with respect to which the trademark is registered. The  ® symbol signifies a registered trademark. 

Section 25 of the Trademarks Act 1999 allows registration of a trademark for a period of 10 years. Renewal applications can be filed up to six months before the trademark’s expiration date. To make renewal easier, Section 25(3) provides a one-year grace period for paying the renewal fee after the registration expires, along with a prescribed surcharge. Additionally, Section 25(4) allows for the restoration of trademarks to the register and their renewal upon payment of the necessary fees.  Trademark protection in India is indefinite, provided the registration is renewed every 10 years. However, if a registered trademark is not renewed, it can be removed from the register.

Trademark registration in India can be renewed after its initial validity period of 10 years by filing a renewal application with the necessary fee.

The procedure of trademark renewal is similar to as it is for trademark registration. The applicant has to file an application and submit all the necessary documents. If the application and the documents for trademark Renewal are complete, then the trademark renewal can be granted.

Read more: TRADEMARK REGISTRATION PROCESS AND PROCEDURE IN INDIA

Benefits of Trademark Renewal

1. Continued Legal Protection

Failure to renew the trademark can result in losing the legal protections that safeguard one’s brand. This can allow competitors to use the mark or something similar, diluting its uniqueness and value.

2. Maintaining Brand Value

A trademark represents the goodwill and reputation one’s business has built over time. If one lets the trademark lapse due to non-renewal, it could damage that reputation and may even lead to losing control over your brand’s identity.

3. Maintaining Exclusivity of Brand name

After registering a trademark, the owner obtains exclusive rights to it. Renewing the trademark ensures that this exclusive ownership continues for another 10 years. A renewed trademark ensures your continued right to exclusive use of your brand name, logo, or tagline, keeping competitors from using similar marks in the marketplace.

4. Avoiding Re-registration Challenges

If one’s trademark registration expires and someone else registers a similar mark, reclaiming the rights may become difficult and expensive, potentially leading to legal disputes.

5. Retains Goodwill and Prestige

A registered trademark can be used for building a franchise model, it can be sold, rented, assigned, or transferred to any person. Thus, renewing the trademark is essential for retaining the goodwill and prestige associated with the brand, ensuring that its value is preserved.

Notice for Trademark Renewal

  1. The Trademark registrar is obligated to send a notice in Form RG-3 informing the proprietor about the approaching expiration date and the conditions to be met with for renewal of registration.
  2. The notice shall be sent 6 months before expiration of the registration of the trademark.
  3. This notice is important, since the registrar shall  have the authority to remove the expired Trademark from the register only if the notice was duly served.
  4. The Registrar have power to remove the trademark from the register if the conditions have not been duly complied with.

Time Limit for Trademark Renewal

  1. There is time limit for submitting the trademark renewal application. The Registrar has provided the given time frame within which the application of renewal can be filed. The deadline is 6 months from the beginning of the expiration period.
  2. As per Rule 57 of the Trademark Rules, 2017, the application for renewal can be submitted up to one year before the expiration date. Usually, the owners tend to forget about the expiration date of their trademark and fail to apply for renewal of the trademark. Therefore the Registrar shall send a reminder notice at the registered address of the proprietor not more than 6 months before the expiration date.

    If the owner still does not respond, the Registrar will publish their intention to remove the mark from the Trademark Journal. The trademark renewal and restoration can also be done between 6 to 12 months of the expiration date by paying prescribed fees and surcharges.
  3. In view of the above, The application to renew the registration of a trademark must be submitted using Form TM-R, along with the fee outlined in the first schedule. This application can be filed at any time up to one year before the expiration of the trademark’s last registration. However, it is always advisable to file before 6 months of the expiry of the trademark. Renewal is also possible within six months following the expiration date of the registered Trademark.

Trademark Registration in India

Documents required for Trademark Renewal

To complete the trademark renewal process, the following documents and details are required:

  1. Completed Trademark Renewal Application Form (TM-R)
  2. Trademark Registration Certificate
  3. Trademark Name and Application Number
  4. PAN Card of the Applicant
  5. Address Proof of the Applicant (any of the following):
    • Aadhaar Card
    • Passport
    • Driving License
  6. Certificate of Incorporation or Registration (if applicable for Company, OPC, Partnership Firm, LLP, etc.)
  7. Power of Attorney (if submitted by an authorized representative or agent)
  8. Original Copy of the Trademark Registration Application Form (Form TM-A) used for the initial registration.

Read more: Documents required for trademark registration

Procedure for Trademark Renewal in India

1. Reminder Notice from Registrar

The Registrar shall send a notice in Form RG-3 to the registered proprietor’s address of service, not more than six months before the trademark’s expiration date. This notice will inform the proprietor about the upcoming expiration and any conditions that must be met for renewing the trademark registration.

2. Filing of Trademark Renewal Application

An application of renewal for the trademark can be filed in Form TM-R and submitted along with the fee as subscribed in the first schedule. If the Registrar does not receive the required application within six months after the expiration date of the last registered trademark, then the trademark is officially removed. The Registrar, after receiving the application, makes sure that all the other required documents including the Form TM-R is submitted along with the required fee. The application moves forward when the interests of other parties are considered.

3. Payment of the fee

The fee is different for different types of registered establishments. The applicant is required to submit a requisite fee for the process of the renewal of the trademark. The fee is paid along with all the necessary documents. If the Registrar does not receive the required fees of for the process before the expiration of the trademark, he removes the trademark from the register and notifies the same by publishing the update in the Trademark Journal. However, if the prescribed fee and surcharge  is paid by the proprietor or the attorney within six months after the expiry date of the last registered trademark, then the application is moved forward for renewalunder Section 25(3) of the Trademark Act, 1999.

4. Checking the Status

After the submission of the application, it is important for the applicant to keep on checking the status of their application as progressed by the registrar.

5. Advertisement in the Trademark Journal

Once the Trademark Registrar has completed the examination and officially accepted the application, the trademark will be published in the Trademark Journal. This journal acts as an official gazette that announces both accepted trademarks and those that may encounter objections.

6. Objections from Third Parties

During this phase, the public, including third parties, has the opportunity to raise any objections regarding the trademark. If no objections are filed within the specified period, the trademark will be recorded in the register.

7. Confirmation of Renewal Registration

The Trademark Registry keeps the information up-to-date on its website. The applicant is notified if the renewal procedure is complete and then their trademark is renewed for the next 10 years.

8. Grant of Renewal Certificate

Upon successful publication and resolution of any opposition, the registry will receive a Trademark Renewal Certificate, signifying the extension of your trademark protection for another ten years.

Consequences of Not Renewing the Trademark

1. Removal from Register

Failing to renew a trademark may lead to its removal from the register if the application is not submitted within the specified timeframe or if renewal fees are unpaid.

2. Notice Requirement

The registrar must give notice of the intention to remove the trademark by publishing it in the Trademark Journal.

3. Loss of Rights

Once removed, the owner forfeits all associated rights, including:

  • The ability to file for infringement
  • Protection against competitors

4. Restoration Opportunity

 The Trademark Office offers a restoration process, allowing the owner to restore the trademark within one year after expiration, even if the renewal deadline is missed.

Restoration of Trademark

  1. The concept of restoration is outlined in Section 25(4) of the Trademark Act 1999. Restoring a trademark gives the owner another chance if they missed the renewal deadline. Like renewing a trademark, restoration extends protection for another ten years. However, the registrar must also consider the interests of everyone involved during this process.
  2. As per Section 25 (4) of the Trademark Act, 1999, if a trademark has been removed from the register due to non-payment of the required fee and surcharge within 6 months from the expiry of the trademark, the Registrar can restore it after six months and within one year from the expiration of the last registration. The owner must submit an application in the prescribed form and pay the necessary fee.
  3. To restore a trademark and renew its registration under Section 25(4), an application must be made using Form TM-R within one year after the trademark has expired, along with the required fee. When considering the application, the Registrar will take into account the interests of other affected parties.
  4. Once the trademark is successfully renewed or restored, a notice will be sent to the registered owner and any registered users. Additionally, the renewal or restoration shall be published in the Journal for public awareness.

Trademark Renewal Form (TM -R)

Conclusion

Trademark renewal is a crucial step in maintaining the exclusive rights to your brand’s identity. Once your trademark is registered, it isn’t protected forever; its validity typically lasts for 10 years. Renewal of trademark is necessary as per the prescribed timeline to keep your mark protected under the law. It is not just a legal formality; it’s an investment in your brand’s longevity and success. Section 25 of the Trademark Act allows a trademark to be registered for 10 years, with the option to renew for additional 10-year periods. Trademark rights can last indefinitely as long as the owner continues to use the mark.

Are you looking for Trademark Renewal? If you need help with trademark renewal, our experts at Registration Arena are here to assist you. Ensure your trademark is renewed smoothly and efficiently.  Also, you can contact us today to start the Trademark Registration process in India smoothly and efficiently.