A Trademark is a unique identity of your brand which needs to get renewed after every 10 years in India. One can permanently keep a trademark with him by timely renewing it. In case a person fails to renew the trademark, he can lose all the protection he received from registration. Renewal of Trademark protects the owner to claim against the infringement of Trademark. Section 25 of the Trademark Act, 1999 provides provisions for renewal, registration and removal of Trademark.
In this Article, we will be discussing about Procedure to renew Trademark, Requirements for Trademark renewal, Time Limit, Consequences of failure to renew Trademark and all other matters related to such renewal of Trademark.
Benefits of Trademark renewal:
- Extension of Ownership of Rights: On renewal of Trademark, one can continue to avail all the Rights over his brand name for a further period of 10 years and can also take an action against infringement of such Rights.
- Security of Brand Name: Renewal of Trademark allows the owner to continue his business without changing the name of his brand for years, he can also make any changes in the sign and word of his trademark while applying for renewal.
- Monetary Benefit: The registered Trademark owner has an exclusive Right over his brand which allows him to make monetary profits by assigning or licensing the mark to someone else in return of monetary compensation.
Procedure for Trademark Renewal:
- A Trademark renewal application can be made in two ways:
- To change any sign or word in already existing Trademark.
- For renewal of Trademark without any change.
- The first step, for renewal of Trademark is; that the Proprietor of the Trademark has to file an application for trademark registration before the termination of expiry period. Such form has to be filed by filing Form TM-R, along with the prescribed fees.
- The fee for application of renewal of Trademark in case of physical filing of Trademark is Rs. 10,000 and for e-filing of renewal application is Rs.9000.
- Trademark renewal requests can be filed at any time before the expiry of the last registration of Trademark. Before expiration of such period, the Registrar will send a notice to the registered Trademark owner regarding the expiration of Trademark and conditions as to the payment of renewal fees. Failure to payment of prescribed fees would amount to removal of Trademark from the register.
- If the Trademark form for renewal is not filed properly or any requirement for such renewal is not fulfilled by the Trademark Owner then the Registrar can remove the Trademark from the Trademark register.
- If one misses to file for renewal of Trademark, it can be filed within six months after the expiry of the registration or renewal in a prescribed form.
Note: No Trademark can be removed if the Notice of renewal has not been passed.
- The Trademark renewal application can be filed by the registered owner of the Trademark himself or by an agent authorized by him.
- The Application for renewal of Trademark has to be made in Form TM-R.(Form has been attached at the end of this Article)
- The Trademark renewal is valid for another period of 10 years and has to be done again before expiry of the period.
After filling of the Trademark renewal application, the next step is to periodically check the status of renewal application, till the time it is processed by the Registrar.
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 Trademark:
If a person fails to file for renewal of Trademark or to pay the prescribed renewal fee he can apply for restoration of Trademark under Section 25(4) of the Trademark Act, 1999 which provides as:
“Section 25(4) -where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.”
Under this section one can apply for restoration by submitting an application in prescribed form and on payment of prescribed fees, or on fulfillment of conditions as prescribed by the Registrar can get his Trademark renewed for a further period of ten years.
Documents Required For Renewal of Trademark:
- Proof of Applicant- Permanent Account Number (PAN) and address proof.
- Trademark Certificate- Trademark Registration certificate, allotted by the Trademark registry.
- Power of Attorney– Power of Attorney has to be made providing power to the agent to file for trademark renewal application on behalf of the Trademark owner.
- Copy of Trademark Application.
It is preferred to take help of an expert while filling for renewal of Trademark application, so that not to make any mistake in the application form because of which it might get rejected and may lead to losing of the Trademark.
We at “Registration Arena” can help you file your Trademark renewal application on time and would love to solve your other Trademark related queries.