Renewal of Trademark in India

Renewal of Trademark in India

The only way to sell the goods in the market is the Brand Value or the Brand Name of the Product or the Company. By trademark, we can get the brand name or brand value of the product. The term of protection of a trademark is unlimited. However, it has to be renewed every ten years from the date of filing to keep it alive. Non-use of the trademark for a period of five years would result in loss of the trademark. However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party. In case the proprietor fails to renew the trademark, then he shall lose all the protection that comes along with registration. It is imperative for a proprietor to seek renewal of registration before the expiry of the validity, failing which the mark becomes liable to be removed from the Register on account of non-renewal. The request for renewal of a trademark can be filed six months prior to the expiry of the validity of registration. The law also permits renewal and restoration of lapsed trademark provided such a request is made within the maximum period of one year after the expiry of the validity. If the registered proprietor of the trademark is not vigilant in renewing the registration either prior to the expiry or within one year after the expiry of validity, the mark shall stand removed from the register of trademark and would not qualify to be renewed. In such a scenario, the proprietor will have no other option but to file a fresh application for registration and to go through the same procedural requirements as if the said application was a fresh application for registration. Section 26 of the Act, however, protects the right of the registered proprietor for a period of one year after the date of removal against third party's claim to registration.

Procedure should be followed while applying for trademark renewal:

·          Preparing a renewal application letter- The proprietor of the trademark has to prepare  Form TM-12, which is an application for renewal.

• Filling application process- The proprietor of the trademark has to file  Form TM-12, which is an application for renewal before the Registrar. This application has to be filed within 6 months from the date of expiration of the registration
• Paying renewal fee – Along with the application for the renewal, the proprietor has to pay a renewal fees as prescribed. Failure to pay such fees will cause the removal of the Trademark from the register
• Quality checking and review
•  Confirmation letter of renewal- Proprietor will get confirmation from trademark authority

Consequences of failure to renew:

If the trademark owner fails to timely file a application for renewal before the end of the sixth year following registration, the registration will be cancelled.  Failure to file the application to renew a registration does not void all the owners' rights to the mark, but the owner will lose the special benefits of federal registration.  The Patent and Trademark Office will not accept a substitute renewal application.  Instead, to retain the special benefits of federal registration, the trademark owner must re-register the trademark with the Patent and Trademark Office.

Before removing the trademark, the Registrar shall first advertise his intention to remove the mark by advertising the notice to remove in the trademark journal. It also affects your legal rights, by not renewing your trademark, in effect weakens your legal position. 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 from the date of expiration of registration by filing form TM-10 and by paying the surcharge.

Restoration of Trademark:

If a trademark has been removed from the Register of trademark on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form(TM 13) for restoration of the mark after six months & within one year from the date of expiration of the mark. After receiving applications to either renew or restore the trademark, the Registrar shall advertise the mark once again and invite objections from people who have reason to believe that the trademark should not be renewed or restored. After the lapse of the prescribed waiting period, if there are no objections raised, then the mark will be entered in the register of trademarks. The entry shall specify that the mark has been renewed for a period of 10 years