Introduction to Trademark Renewal
A Trademark is a form of Intellectual Property Right which an owner can exploit to distinguish his goods and services from his competitors. It gives a brand name to the owner. It is a symbol or picture or any icon, represented by an ‘R’ in the end or bottom of the image. The Trademark is registered under the Trademark Act of 1999. The trademark should be distinctive and free from any kind of abusive content and should not contain any elements of national emblem. All the Intellectual Property Rights are registered for a given period of time and duration. Trademark is no different. Under the Trademark Act of 1999, the trademark issued to any establishment is valid up to 10 years. However it can be renewed following a certain trademark renewal procedure. The procedure of trademark renewal is similar 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 offered.
Deadline for Trademark Renewal
There is again a deadline for submitting the trademark renewal application. The Registrar has provided with the given time frame within the which the application of renewal can be filled. The deadline is 6 months from the beginning of the expiration period.
Sometimes, the owners tend to forget about the expiration date of their trademark. So the Registry has an option to send a reminder notice at your registered address 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 can also be done between 6 to 12 months of the expiration date by paying prescribed fees and surcharge.
Benefits of Trademark Renewal
The process of Trademark renewal can bit cumbersome but once done, can bring out a lot many benefits to the working of your company. The trademark is an right to protect the exclusivity of the product or services.
Legal Protection
If your trademark is in existence, there is no one to question the exclusivity of your product or company. If the owner feels that their right of trademark is infringed, they could also take the same into court if their trademark is in existence.
Business Opportunity
A trademark not only gives the exclusive rights to use the symbol. It also has a business significance. The trademark is a brand name for the company and it helps in distinguishing the products of the competitors with the products of the company. The example of such a thing is competitors like McDonalds and Burger King.
Unique Identity
The trademark is such a thing that the company can try and maintain their quality in the product. The very easy way of doing the same is when people know you by name and refer your name to their friends.
Trademark Renewal Procedure
Reminder of Application
Between one month and three months before the expiration date of the trademark, Registrar decides to notify the owner of the trademark, not more than six months before the application expires, by sending the notice in the Form RG-3 at the registered address or by notifying the attorney in charge. The Notice will be sent by any authorised agent or his or her official. This acts as a reminder for the trademark holder. The application is filed in the form of TM-R.
Filing of Application
An application of renewal for the trademark can be filed in From 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 is submitted along with the required fee. The application moves forward when the interests of other parties is considered.
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 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 fee 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 under Section 25(3) of the Trademark Act, 1999.
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. Sometimes, the process requires for the applicant to submit responses on a time bound basis. If the applicant misses the deadline, it could be problem. Therefore it is important to regularly check the status on the website.
Confirmation
The Trademark Registry keeps the information up-to-date on their website. The applicant is notified if the renewal procedure is complete and then their trademark is renewed for the next 10 years.
Consequences of missing Trademark renewal:
If a person fails to file an application for renewal there are chances that he may lose his trademark. When no renewal application is filed or the prescribed fees for renewal has not been made, the Registrar of Trademark may remove the mark from the register.
Before removing the Trademark, the trademark registrar has to first advertise his intention of removing the trademark in trademark journal.
The Trademark Act, 1999 Section 25 (3) gives a chance to the trademark owners which provides :
“Section 25 (3)- At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the condition as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade from the register
Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2)”
Thus, an application for renewal of trademark even after the expiration of the last registration of trademark can be made within six months of such period.
Restoration of the Trademark
Application
After the receipt of the application, the Registrar checks if all the necessary details have been filled and the application is attached with the required documents and fee. When all the requirements are met, the Registrar moves the application to the process of restoration of the trademark. Once restoration is done, the owner or the applicant is notified about the same. The same will be notifies in the official journal.
Opposition
The Registrar invites Opposition to the Trademark published in the Journal. If no such objection if found, then the Trademark is renewed otherwise, process of opposition takes place. The registrar calls a hearing at the court and interests of both the sides are heard. The decision is taken accordingly.
If any other entity applies for the registration of the expired trademark, the applicant apply for an opposition in the new application and the process that follows is same for all the other opposition applications.
Trademark Act, 1999 and Trademark Rules of 2002 gives exclusive rights to the owner of the trademark that even if the trademark is expired, he or she can apply for a renewal of the trademark. In this way, he can ensure that the exclusivity of his brand is maintained.
Documents Required for Trademark Renewal
The Government of India has helped the owners of the establishments by simplifying the process of registration. The registration can also be done online.
The details of the forms required are as follows:
Sole Proprietorship or Individuals
Any individual or a sole proprietor of a trademark can apply for the renewal the period of their trademark. Any individual whether Indian National or Foreign National can apply. The process of the same is very easy for this category as it is not important for any individual legal entity or business entity to register their trademark. Documents required for the enterprise is same as that of the owner.
- Signed copy of TM- 48
- A picture of the logo (optional)
- Address proof of the Signatory
- Identity proof of the Signatory
LLP/ Partnership/Company
For a small enterprise or start-up, the fees is 4500 rupees for the governmental procedure. Otherwise, for bigger companies, it is 9500 rupees. If a start-up wishes to use the above benefits, it has to submit an Udyog Aadhaar Certificate. Other than that, the following documents are required: (The Registration fees is 4500 but renewal fees is 9000 for all applicants)
- Signed copy of Form 48
- A picture of the logo (optional)
- Address proof of the Signatory
- Identity proof of the Signatory
- Udyog Aadhaar Registration Certificate (For Micro, Small and Medium Enterprises only)
- Incorporation Certificate or Partnership deed
Others
The establishments without owning the Udyog Aadhaar Certificate, are required to submit the following forms:
- Signed copy of TM- 48
- A picture of the logo (optional)
- Address proof of the Signatory
- Identity proof of the Signatory
- Incorporation Certificate or Partnership deed.
Conclusion
India is always progressing and moving forward to the era of commercialization. With it, the demand of trademarks has been increasing. It helps in protection of the exclusivity and uniqueness of applicant’s products and services. With the advent of technology, the process of submission of trademark renewal application have made easier. The government too facilities reminding the owner about the trademark expiration date.
At Registration Arena, we are continuously available to help you understand how to renew your trademark. Trademark Renewal in India can be done through Registration Arena in all major cities including Hyderabad, Mumbai, and New Delhi, Chennai, Kolkata & all other Indian cities. It takes 7-12 working days on an average to complete registration, subject to the government processing time and the client document submission. We also help in helping you to submit a trademark application.
