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Trademark Renewal – A Protection to the Trademark Holder

Akansha Gupta

| Updated: Sep 14, 2021 | Category: Trademark Registration

Trademark Renewal - A protection to the Trademark Holder

Trademarks are graphically highlighted marks that assist people in identifying the firm or individual who created the products or services. Such marks can be registered with the Trademark Registry Offices under the Trademark Act of 1999. In India, there are five trademark registry offices: Mumbai, Delhi, Kolkata, Chennai, & Ahmadabad. When a trademark is registered, the owner gains special & exclusive rights to its use and is legally protected against anyone infringing on those rights. Registered trademarks have a 10 restriction term. If a trademark is used for 5 years, it may be revoked at the request of another party. Every 10 years, the holder of a trademark has the option of trademark renewal indefinitely. The Registrar provides the trademark holder with a 6 window before the end of the 10 year period in which to renew their trademark and continue to enjoy the rights granted. If a person fails to renew a trademark, the registrar will publish an advertisement in the Trademark Journal notifying the trademark’s removal.

If the trademark is not renewed after 10 years, the individual has the choice of restoration, which implies renewal but with a fine.

What is Trademark Renewal?

Trademarks are valid for the period of 10 years and can be renewed thereafter. The Registrar has provided you with a broad opportunity to do so, commencing 6 months before the date of expiration. However if someone forgets (as many major organisations do) they will get a notification to your registered address before the expiry date. If someone still does not renew their trademark, the registrar may announce its intention to withdraw it in the Trade Marks Journal. Nevertheless, this is unlikely to occur until 12 months beyond the expiry date. Trademark registration can be renewed for a penalty between 6 – 12 months after it expires through a procedure known as ‘restoration.’

Trademark Renewal Benefits

  • Legal Protection-  

If anyone feels their registered trademark has been violated, one may simply assert your rights in court.

  • Protection from Frivolous Litigation-

It is feasible to enjoy continuous trademark protection without the risk of lawsuit. Trademarks Renewal makes it hard for anybody other than the trademark owner to claim rights to it.

  • Extensive of Ownership Rights-

Anybody can obtain protection against infringement of rights to a brand name. After each renewal, the exclusive rights to the trademark are extended for a period of 10 years. As a result, it provides long-term protection for your brand and the goodwill it has generated.

  • Business Opportunity-

A trademark is an intangible asset that might be quite valuable if your business is successful. For example Tide, Nike, or McDonald’s. Businesses may make a lot of money in royalties by entering into licensing agreements or transferring ownership to interested parties.

  • Unique Identity-

One would like their consumers to associate their products or services with their brand. The very first step in achieving this is to get your trademark register. The law would then prohibit the registration of any comparable phrases or slogans.

  • Brand Name Security-

Trademark Renewal ensures that the brand name is protected indefinitely. Failure to renew results in the loss of legal protection for the brand name.

  • Monetary Returns-

The trademark owner has the exclusive right to assign or lease the mark to others in exchange for monetary remuneration. As a result, a registered trademark can also be profitable.

Trademark Renewal Checklist

  • Possession of a registered trademark by the proprietor, subject to renewal.
  • Eligibility should be determined based on the intended for commercial usage.
  • Conduct a trademark check of the eminent and licenced trademark database to ensure that there are no identical trademarks.
  • In case there is a trademark issue, it is prudent to seek legal advice for a realistic solution.
  • Obtain and prepare a renewal application in order to meet with the relevant conditions.

Documents required for Trademark Renewal in India

Documents required for Trademark Renewal in India

Application filing procedure of Renewal of Trademark in India

The specified timeframe for filing a trademark renewal application as per the Trade Marks Act of 1999 (Section 25 (3)) and Trade Marks Rule of 2017 (Rule 57) is anytime not more than 1 year before the expiration of the previous registration of the brand by paying the necessary renewal fees, failing will be withdrawn from the registry.

The Registrar must not remove the mark from the register if an application for payment of the renewal fee and surcharge is filed within 6 months following the expiration of the last registration of the trademark, according to Proviso to Section 25 (3) of the Trade Marks Act, 1999. Following  the extended period of time expires, the trademark will be withdrawn from the registry.

To initiate, keep in mind that you must initiate the renewal procedure within 6 months before the trademark’s expiration date. After all, the Registrar will only notify you of the trademark’s expiry very close to the deadline, and the procedure does take a few months to complete.

The renewal procedure necessitates the use of a form, Form-18. The application must be supported by the required fee for renewing the trademark. Before it is eventually renewed, the application for trademark renewal is examined for quality. Following the completion of the reviews, the trademark owner is entitled to a certificate of renewal, indicating his ongoing ownership.

Types of Trademark Renewal

Trademark Renewal might be of 2 types:-

Types of Trademark Renewal

Trademark Renewal Procedure

The steps for renewal are as follows:-

  1. A renewal application is submitted in the form of TM-R[1].
  2. Either the registered owner of the trademark or an agent authorised by him may file the application.
  3. It is critical that the owner gets the assistance of a specialist when renewing a trademark application to guarantee that the mark is adequately protected. This is due to the possibility that you will wish to extend the area of protection. Admittedly, if your brand has been around for ten years, it is possible that it has outgrown the categories in which you initially registered it.
  4. Filing a trademark renewal application extends the term of the trademark for another ten years.
  5. Form-18 is being used to submit the application together with the required payments. Before it is authorised for renewal, the application is evaluated for quality.

Check the Status

Following the submission of a trademark renewal application, it is critical to monitor the status of the renewal application on a regular basis until it is processed by the Registrar. The trademark renewal may need a number of time-bound acts or responses from the applicant. As a result, it is crucial to monitor the progress of the application on a regular basis and take the necessary action until registration.

Trademark Journal

The Trademark Journal is the Trademarks Registry’s official publication. If the Trademark Examiner rules that the application is valid, the trademark is published in the Trademark Journal. As a result, the renewal procedure should commence 3 – 6 months before the trademark’s expiration date. While the application is being marketed, third parties have the option to object to the mark’s registration. When renewing an existing trademark, this procedure is not required. If the brand is still viable, it must be renewed. Otherwise, it may be exploited.

Trademark Renewal Fees

The official charge for filing a renewal application online for one trademark in one class is INR 9000/-, but the official price for filing a renewal application in person for one trademark in one class for a corporation is INR 111000/-.

In India, a request to renew a trademark could be made after 6 months of the expiry of the registration/renewal period if accompanied by the required late renewal payments on the specified form.

In India, is a trademark renewal application reviewed?

In India, renewal applications are not examined because filing for renewal within the statutory term is a matter of right. As a result, if a trademark registration has been renewed within the statutory term and with the required fee in accordance with the Indian Trade Marks Act, the Trade Marks Registry will renew it.

What happens if the trademark expires?

If someone does not register for trademark renewal within 6 months of the expiry date, there is still hope since they may apply for Restoration.

One can apply for restoration as per Section 25(4) of the Trademark Act, 1999 by filing an application and paying the necessary fee. Nevertheless, this may only be done within 1 year of the trademark’s expiry.

Restoration of Trademark

It is possible that a person will neglect to renew their trademark within the time frame specified. Not to worry, there is still an alternative in such circumstances. If a trademark is not renewed, it might be attempted to be restored. The Trademark Act of 1999 provides for trademark restoration under Section 25 (4), which permits anyone to apply for trademark restoration.

Restoration is only possible within 1 year of the registered trademark’s expiration. The restoration of a trademark entails an extra charge in addition to the renewal fee of:-

  • Rs. 10,000/- if done physically by a person
  • or an extra Rs. 9000/- if done online

How can Enterslice assist you?

  • Expertise – We connect you with reputable specialists and work with them to meet all of your legal requirements.
  • Fill out the form – We’ll send you the forms you need to renew your trademark.
  • Schedule a Call back – The greatest services are only a phone call away.
  • Send us Your Documents – We’ll look through the documentation that you’ve got. We provide a smooth interaction with the government by managing all of the documentation. To create reasonable expectations, we give clarity on the renewal procedure.
  • Track Progress – You may keep up the track of your progress at any moment using our online platform.
  • Get Deliverables – You’ll be regularly informed about the status of your project.

Read our article:How to File a Complaint against Trademark Infringement in India?

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Akansha Gupta

Akansha is a Delhi-based lawyer who is actively involved in publishing articles on a plethora of aspects of Indian and International laws. She holds Master in law (LL.M) focused on Business Laws from Amity University, Noida. Having expertise in the same, she has authored several publications on legal topics related to corporate, M&A and commercial laws.

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