Protection under trademark registration is granted for ten years. You are required to renew your trademark once every ten years to continue using the trademark. If you forget to renew your trademark, you will have to face many complications, and the biggest of all is that someone else will start using your trademark. In that case, you do not even have the option to restore your trademark. Therefore, you must always file a trademark renewal application within six months from the date of the expiry of the trademark so that you do not have to face any consequences. In this blog, we will discuss costs of failing to renew Trademark.
What Is Trademark Renewal?
Before we discuss the legal consequences of failing to renew Trademark, let’s understand the meaning of Trademark Renewal. Trademark renewal is the process of renewing your trademark within ten years to continue using the trademark and getting the rights associated with it. This process helps the owner retain the legal rights he gets while registering a trademark. Furthermore, the trademark renewal is done in two ways:
- You can renew the same trademark without any changes
- You can renew the trademark with any changes or modifications.
Benefits of Trademark Renewal
- Renewal of the trademark extends the time limit of rights that comes with registering the trademark. Moreover, your brand stays protected until you keep renewing the trademark.
- The trademark renewal allows you to restrict others from copying your trademark, and your brand identity will remain unique.
- Once your trademark is renewed, you have the right to file a suit for infringement on any person who has infringed or copied your trademark.
- With the renewal of the trademark, the trademark owner can earn more profit by licensing the trademark to any other person. By licensing, the owner gets the license fee and a share in the profit of the licensee.
What Are The Costs Of Failing To Renew Trademark?
Failing to renew trademark may result in these repercussions:
- Your Trademark May Be Taken By Someone Else
If the owner of the trademark fails to renew trademark, then someone else may take that trademark. There are very rare chances that such a situation may arise, but if such a situation arises, then the original owner of the trademark does not even have an option of restoring the trademark.
Moreover, till the time your trademark is registered, no other similar or confusing trademark can be registered, but if the trademark registration expires, then any of the confusing or similar trademarks can be registered. Also, all the rights that an owner gets while registering a trademark will no longer stay with him as soon as the trademark registration expires and the proprietor does not file the renewal application. Therefore, there are chances that you may lose your trademark.
- Limited Class
As you know, that same trademark cannot be registered in one class. Therefore, in case you miss the renewal date of your trademark and any other person registers the same trademark as yours in the same class of trademark, then you cannot renew trademark for the same class of goods and services. Re-registration in the same class will not be permitted if anyone has already registered the same trademark in the same class in which your goods or services fall.
There are set guidelines that a trademark cannot be registered in the same class if any such same trademark is registered in that particular class. Any other similar trademark application will be rejected.
- You May Lose The Chance Of Re-Registration Of Your Trademark
In case you have missed your trademark renewal date, and till the time you thought of re-registration, someone else has registered the same trademark, in such a case, you have lost all the rights over your registered trademark. According to EUIPO[1] guidelines, a mark will not be registered if it is identical to one already registered or infringes on current rights. Any efforts to re-register the mark will be rejected if these problems did not exist when the mark was first registered but have since emerged.
Missing your trademark renewal runs the risk of losing the mark entirely, as well as reducing the scope of the protection it gets in the event that re-registration is subsequently pursued.
- Late Fees for Trademark Renewal
In case the owner has missed the renewal date, there is still six months period in which the owner can renew the trademark by paying additional fees. But, while renewing the trademark after its expiry, the registrar has to check whether, in the meantime if somebody has already registered any similar trademark. If no such trademark has been registered, then the registrar renews your trademark application by charging extra fees.
- Geographical Limit
In case you have taken a trademark of your unique identity, be it name, logo, symbol etc., in multiple countries and you fail to renew your trademark in any one country. Moreover, in the meantime, if any other person trademarks the same mark, his trademark application will be accepted as your trademark has already expired and has not been renewed. Therefore, you will be restricted from re-registering the trademark in that country, and this will create geographical limitations to your business.
This, in turn, will impact your business and may create problems in business expansion and hinder profits.
- Additional Agent Fees
The immediate result of proprietors missing their renewal date is more than just a risk of needing additional legal support. These services are necessary to write agreements with rival businesses, negotiate the delayed renewal and payment of late fees, or deal with the problems that will undoubtedly arise if some or all of your brand rights are lost.
Owners who fail to submit their renewal on time run the risk of not only the consequences but also the costs connected with this extra help, which is more expensive to the owner.
Restoration of Trademark
Section 25(4) of the Trademark Act, 1999 talks about the concept of restoration of the trademark. If the trademark owner has not renewed the trademark within the prescribed time, then he has a last chance to file a renewal application after six months of the expiry of the trademark but before one year. Moreover, the restored trademark is valid for another ten years, the same as that of a renewed trademark.
Conclusion
The filing of a trademark ensures the protection of the owner’s name from all potential harm. As a result, whenever necessary, it is recommended to renew the trademark. It can only be used for a term of ten years. If the owner chooses, they may extend the agreement forever for additional times. The trademark registration has been accommodating enough to offer numerous chances for the same. The proprietor may still apply for restoration even if he forgets to renew the trademark. Therefore, the owner must safeguard their trademarks against potential infringements forever.
Also Read:
What Is The Process Of Trademark Renewal In India?
