In India, trademarks are registered for a period of ten years. However, to maintain perpetual ownership and ensure continuous protection of the trademark, it must be renewed periodically. The process of trademark renewal in India involves filing an application with the Registrar of Trademarks along with the requisite fees. The renewal application may be made at any time within one year of the expiration of the trademark registration.
Let us understand the process of Trademark Renewal in detail below.
UNDERSTANDING TRADEMARK RENEWAL IN INDIA
Trademark renewal in India is governed by Section 25 of The Trade Marks Act1. This section outlines the duration, renewal, removal, and restoration of trademark registrations. It establishes the legal framework for ensuring the validity of registered trademarks and the corresponding Trademark Rules specify the procedure for renewal.
DURATION OF TRADEMARK REGISTRATION
Under Section 25(1) of the Act, the registration of a trademark in India is valid for a period of 10 years. This period begins from the date of application or the last renewal of registration, whichever is applicable. Therefore, trademark owners must ensure that their trademarks are renewed periodically by paying the requisite fees.
THE NEED FOR RENEWAL
Trademark renewal is essential to ensure the continued protection and ownership of a trademark and Intellectual property rights. Failure to renew a trademark can have significant implications for businesses, including:
- Loss of statutory protection: If a trademark registration is not renewed, it may be removed from the register by the Registrar of trademarks. This could result in the loss of statutory protection and exclusive rights associated with the trademark, leaving the mark vulnerable to exploitation by competitors.
- Loss of right to sue for infringement: Without a valid trademark registration, businesses may face challenges in enforcing their rights against unauthorised use of their trademark. Renewal helps maintain the legal presumption of title and ownership, strengthening the trademark's position in case of a dispute or litigation.
- Impact on reputation: A lapsed trademark registration could undermine the credibility and reputation of a trademark, leading to loss of trust among consumers. Renewal demonstrates a commitment to maintaining the integrity and authenticity of the trademark, enhancing its value and recognition in the marketplace.
THE PROCESS OF TRADEMARK RENEWAL
NOTICE FROM REGISTRAR
The Registrar of Trademarks is responsible for issuing notices to registered proprietors regarding the expiration of their trademark registrations. These notices are issued six months prior to the expiry of a mark and serve as reminders for trademark owners to initiate the renewal process and fulfil the necessary requirements within the stipulated time frame. Proper attention to these notices is essential to ensure timely renewal and maintenance of rights.
Failure to comply with the renewal requirements and deadline specified in the notice can have severe consequences. Non-compliance may lead to the removal of the trademark from the register, resulting in the loss of statutory protection and exclusive rights associated with the trademark. It is incumbent upon trademark owners to promptly take appropriate action to renew their trademarks.
APPLICATION FOR RENEWAL
- Filing requirements: To renew a trademark in India, the registered proprietor must submit an application on Form TM-R in the prescribed format, along with the requisite fees. The renewal application must be filed within the date of expiry of the trademark.
- Timelines and deadlines: The renewal process should commence at least six months before the expiration date of the trademark registration. In case the proprietor fails to renew the trademark within the date of expiry, an application can still be filed within 6 months from the date of expiration by payment of an additional surcharge fee. However, failure to file the renewal application within this period may result in the removal of the trademark from the register. It is crucial for trademark owners to adhere to the deadlines to avoid lapses in protection.
BENEFITS OF TRADEMARK RENEWAL
STATUTORY PROTECTION AND PRESUMPTION OF OWNERSHIP
Renewing a trademark in India offers better protection and establishes a presumption of title and ownership. A registered trademark provides the owner with exclusive rights to use the mark in connection with the designated goods or services. Renewal ensures the continued validity of these rights, strengthening the owner's legal position and safeguarding against unauthorised use or infringement. A registered trademark provides a simple means of proving title to the mark and serves as a powerful tool in litigation and enforcement actions, facilitating favourable outcomes to trademark owners.
CONTINUITY OF BRAND RECOGNITION AND REPUTATION
Trademark renewal plays a vital role in maintaining perpetual brand recognition and reputation. A trademark serves as a valuable asset that embodies the goodwill and reputation associated with a brand. By renewing the trademark, the owner ensures protection of key brand elements, including logos, slogans, and product names. This continuity is essential for preserving consumer trust and loyalty, as well as sustaining brand equity in competitive markets. Consistent use of a registered trademark reinforces brand identity and distinguishes the owner's products or services from those of competitors, fostering long-term success and market differentiation.
POTENTIAL FOR LICENSING AND REVENUE GENERATION
Renewing a trademark opens up opportunities for licensing and revenue generation. A registered trademark grants the owner the exclusive right to assign the use of the mark to third parties in exchange for royalties or other financial considerations. By maintaining a valid trademark registration through timely renewal, the owner can leverage the brand's value and reputation to enter into licensing agreements with manufacturers, distributors, and other business partners. Licensing arrangements not only generate additional revenue streams but also expand the reach and visibility of the brand, driving further growth and market penetration. Moreover, trademark renewal enhances the attractiveness of the brand to potential investors or buyers, increasing its overall value and investment potential in the marketplace.
CONSEQUENCES OF FAILURE TO RENEW
REMOVAL FROM REGISTER
Failure to renew a trademark in India can result in its removal from the register maintained by the Registrar of Trademarks. This removal effectively terminates the statutory protection and registration status of the trademark, rendering it vulnerable to unauthorised use by third parties. Once removed from the register, the trademark loses its official recognition and the privileges afforded to registered marks.
LOSS OF STATUTORY RIGHTS AND PROTECTIONS
The consequences of failing to renew a trademark extend beyond mere removal from the register. The loss of registration status entails the forfeiture of statutory rights conferred upon registered trademark owners. Without a valid registration, the owner relinquishes the exclusive right to use the mark in connection with the designated goods or services, as well as the ability to enforce trademark rights against infringers through infringement action. Moreover, the absence of registration makes it more difficult for owners to assert ownership and protect their rights effectively.
RESTORATION PROCESS AS A LAST RESORT
In cases where a trademark has lapsed due to non-renewal, the proprietor has the option to restore the mark through a restoration process. The proprietor can still file an application on Form TM – R after six months and within one year from the date of expiry of the trademark. While this process allows the proprietor to apply for the reinstatement of the trademark, it incurs a renewal surcharge. As such, restoration of a trademark should be considered a last resort option, and trademark owners must prioritise timely renewal to avoid the risk of loss of rights and the need for restoration.
TIPS FOR SUCCESSFUL TRADEMARK RENEWAL
STAY INFORMED AND PLAN AHEAD
To ensure successful trademark renewal in India, it is essential for trademark owners to stay informed about the renewal requirements and timelines. By proactively monitoring the expiration dates of their trademarks and staying abreast of any changes in renewal procedures, owners can avoid the risk of inadvertently allowing their marks to lapse. Planning ahead allows owners to allocate sufficient time and resources for the renewal process, minimising the likelihood of last-minute complications or delays.
MAINTAIN ACCURATE RECORDS AND TIMELINES
Maintaining comprehensive and up-to-date records of trademark registrations, renewal deadlines, and renewal-related communications is critical for effective trademark management. By keeping organised records of renewal notices, application filings, and payment receipts, owners can ensure timely compliance with renewal requirements and avoid potential discrepancies. Additionally, adhering to prescribed timelines for renewal submissions and responses is essential to prevent lapses in registration and maintain uninterrupted protection for trademarks.
SEEK PROFESSIONAL ASSISTANCE IF NEEDED
This may perhaps be the most important tip. The trademark renewal process in India can be complex and therefore, seeking professional assistance from qualified trademark attorneys or agents can provide valuable guidance and support. Experienced professionals can help owners understand their renewal obligations, prepare and file renewal applications accurately, and address any challenges that may arise during the renewal process. By entrusting renewal tasks to competent professionals, trademark owners can streamline the process, mitigate risks, and ensure compliance with all legal requirements.
FREQUENTLY ASKED QUESTIONS
1. WHAT IS THE RENEWAL PERIOD OF A TRADEMARK?
The renewal period of a trademark is typically 10 years. After the initial registration, trademark owners can renew their trademarks indefinitely every 10 years to maintain statutory protection and exclusivity over their brands.
2. WHAT HAPPENS IF YOU FAIL TO RENEW YOUR TRADEMARK?
Failure to renew a trademark within the prescribed period can have serious consequences. The trademark may be removed from the register, resulting in the loss of statutory rights and protections associated with registration. This could leave the brand vulnerable to exploitation by third parties.
3. HOW DO I DOWNLOAD A TRADEMARK RENEWAL CERTIFICATE?
Trademark renewal certificates are typically issued by the trademark registry upon successful renewal of a trademark registration. To obtain a renewal certificate, trademark owners can contact the relevant trademark branch office or access them online through the Official website of Intellectual Property India.
BIBLIOGRAPHY:
- The Trade Marks Act, 1999
- https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.