India is growing bounds and leaps as a destination for trade in the world. With the increase in business and commerce in the country, the demand for Registration of Trademark is growing day by day. A Trademark is a symbol, sign, word, or words legalized or registered for the use of representation of the products or services of a company. The illegal use of a registered Trademark gives the authority to the authorized Company the right to legal action against the infringer of the Trademark. The Trademark Registration is the most important feature of the Company. After the formation of the Company, the Registration of Trademark of Company with the Registrar should be done. The Registration of Trademark is valid for 10 years only.
Therefore, the Company should renew the Trademark from time to time to retain the Trademark rights associated with the Trademark. In case the Company fails to apply for the Renewal of Trademark, then the Company can apply for Trademark Restoration. The different opportunities for Renewal and Restoration of Trademark is provided to the applicant of Trademark to protect the value and reputation of Trademark in the market. In this article, we will discuss the procedure for Trademark Renewal and Restoration in India.
What is Trademark Renewal?
The Registration of Trademark expires after 10 years in India. In order to keep the Registration of Trademark permanent, an application for Renewal of Trademark should be filed either online or offline to the Registry of Trademark. The application should be filed with the prescribed fees to the Registry. The process of Renewal of Trademark should begin at least 6 months before the date of the expiration of Registration of the Trademark. The Renewal of Trademark helps the owner of registered Trademark to keep the Trademark permanent and perpetual. The Renewal of Trademark can be done as many times, and for how many years, the owner of Trademark wishes to keep the status registered and active.
The owner of registered Trademark, which fails to comply with the stipulated time period and prescribes fees for the Renewal of Trademark, will lose the Trademark Registration and have to bear the adverse effects related to it.
What is Trademark Restoration?
As per Section 22(4) of the Trademarks Act, 1999, the owner of the registered Trademark can apply for Trademark Restoration. Trademark Restoration is the process of bringing back the Trademark, which is removed to the Register of trademarks at the Registry. Such removal of Trademark from Register is caused due to absence of timely Trademark Renewal of the previous or original Registration of the Trademark. The removed Trademark can be restored in the Register of Trademark by filing an application for Trademark Restoration to the Registry of Trademark. The application for Restoration can be filed even after 6 months, and also within 1 year from the date of expiration of the last Registration of Trademark. The application for Trademark restoration should be filed in Form TM-R along with the Restoration fee and the prescribed Renewal fee.
While considering the request of Trademark Restoration, the Registrar should assess the interest of all other affected persons. After the acceptance of the request for Restoration, the Registrar should make an advertisement in the Trademark Journal about the Trademark Restoration.
The costlier and contemptible task of the Restoration of a removed Trademark from the Register of Trademark can be avoided, if the concerned owner of the registered Trademark takes due care for the Renewal of the last Registration of Trademark. The Renewal of Trademark should be done within a maximum of 6 months from the date of the expiry of its registration of Trademark. A Trademark is removed from the Register of Trademark on the grounds of non-renewal will be done only after 6 months from the date of expiration of Registration of Trademark. However, a prescribed additional fee is applicable for Renewal of Trademark Registration after the due date of mandatory Renewal is passed. Hence, it is always advisable for the owner of the Trademark to do the Trademark Renewal within the prescribed time period.
What is the need for Trademark Renewal and Restoration?
The Registration of Trademark is not enough, the applicant of Trademark Registration should proactively ensure the Trademark Renewal and Restoration in the prescribed time period:
- For the Restoration of legal rights associated with the registered Trademark;
- For shielding the brand value of the business from the third parties;
- For the eligibility to file for Trademark Infringement;
- For claiming remedies for Infringement of Trademark;
- For the protection of business and person associated with the business.
What documents are required for Trademark Renewal?
The documents required for Trademark Renewal are as follows:
- The PAN Card of Applicant;
- The Address Proof of Applicant;
- A Power of Attorney to the Attorney by the applicant;
- The Trademark Registration Certificate issued by Registry of Trademark;
- The application filed for Registration of Trademark to the Registry of Trademark.
Read our article:Grounds for the Refusal of the Trademark Registration
What is the procedure for Trademark Renewal?
The Renewal of Trademark can be done in the following 2 ways:
- Application of Renewal of Trademark without any change;
- Application of Renewal of Trademark with change in words or sign in the already existing registered Trademark.
The procedure for Renew Trademark is as follows:
Filing of Application
- The application of Renewal is made in Form TM-R.
- The application should be made by the owner of the registered Trademark or by an agent authorized by the owner.
- The help of professionals should be taken while filing for the application of the Renewal of Trademark. The help from professionals will ensure that the Trademark is well protected.
Status Check of Application
- After filing of the Renewal of Trademark application, it is important to check for the status of the application from time to time until the Registrar of Trademark processes the application.
- The Renewal of Trademark sometimes requires various time-bound actions or responses from the applicant of the registered Trademark.
Advertisement in Trademark Journal
- In the Trademarks Registry, the Trademark Journal is an Official Gazette, which states that whether the application of Trademark registration is accepted or not.
- If the Trademark Registrar, thinks that the application is acceptable, then the Trademark is advertised in the Trademark Journal.
- When the application is advertised in the Trademark Journal, the third party is given an opportunity to oppose the Registration of the Trademark. The process of opposition is not needed while there is Renewal of an already existing Trademark.
What are the consequences of failure to Renewal of Trademark?
The consequences of not renewing the registered Trademark are severe. In case if the application for Trademark Renewal is not filed, or the prescribed fees for the Renewal of Trademark is not paid by the owner of the registered Trademark, the Registrar can remove the Trademark from the Register of Trademarks. Before the removal of Trademark from the Register of Trademark, an advertisement for the intention of Registrar to remove the Trademark from Register of Trademark should be done in the Trademark Journal.
The failure to renew the Trademark not only affects the owner of the Trademark but also affects the person who is either licensed or assigned with the registered Trademark. The Non-Renewal of the Trademark also weakens the legal position of the owner of Trademark.
The Registration of Trademark gives the benefit of exclusiveness to the owner of Trademark. The Registration of Trademark protects the owner from Infringement of Trademark claims. The primary benefit of Renewal of Trademark is that any person cannot use your Trademark and affects the reputation and value of the Trademark in the market.
Hence, to protect the Trademark, the Trademark Act, 1999[1], gives another chance to renew the Trademark by Trademark Restoration.
What are the requirements for Trademark Restoration?
The requirements for Trademark Restoration are as follows:
Form TM-12
The application in Form TM-12 is filed when the process of Trademark Renewal is within the specifies timeline. There will be a requirement of any surcharged fees if the application if files within the stipulated time period.
Form TM-10
The application in Form TM-10 is filed when the process of Trademark Renewal is carried within 6 months before the date of the expiration of the Registration of Trademark. The prescribed Renewal fees are applicable with Form TM-10 and should be submitted with the Form.
Form TM-13
The application in Form TM-13 is filed when the registered Trademark is removed from the Register of Trademark by the Registrar. The Restoration or Renewal process will take time from 6 months to 1 year from the date of the expiration of the Registration of Trademark. The prescribed fees for both Renewal and Restoration of Trademark will be levied upon the applicant.
What is the procedure for Trademark Restoration?
The procedure for Trademark Restoration is as follows:
- In case the Trademark Renewal period has lapsed, and no application for the Renewal is filed before the expiration, then the owner of registered Trademark can apply for Trademark Restoration.
- The application for Trademark Restoration should be made from 6 months to 1 year after the date of the expiration of the Registration of Trademark.
- The owner of the registered Trademark has to file the Trademark restoration application in Form TM-13.
- After the receipt of the application of Restoration of Trademark, the Registrar should advertise the Trademark in the Trademark Journal. The advertisement is done to invite objections from the people who believe that the Trademark should not be restored.
- The prescribed period for filing objections has lapsed, and no objections are raised, then the Registrar will enter the Trademark in the Register of Trademarks.
- The entry of the Trademark in the Register should specify that the Trademark is now renewed for a period of 10 years.
What are the benefits of Trademark Renewal?
The benefits of Trademark Renewal are as follows:
Protection from Frivolous Litigation
- The time to time Renewal of Trademark will save the possibility of any chance of Litigation on the owners of the Trademark. The Renewal of Trademark makes it impossible for any person to claim rights on the Trademark other than the owner of the Trademark.
Security of Brand Name
- The Renewal of Trademark will promise continuous and unhindered protection of Brand Name from the competitors in the market. There will be a loss of legal protection of Brand Name if the time period to file for application of Renewal of Trademark has lapsed.
Ownership Rights Extension
- The applicant can avail protection from the Infringement of Trademark. The Trademark Renewal extends the exclusive rights over the registered Trademark for 10 years after each Renewal of Trademark.
Monetary Returns
- The owner of a registered Trademark has the exclusive rights to license or assign the Trademark to someone else. The assignment and license are given to someone else in return for some monetary compensation to the owner of the registered Trademark. The owner can thus, make a profit from the registered Trademark.
Conclusion
The Trademark Registration is a type of an Intellectual Property Rights protection. Under Trademark Registration, a visual symbol or a word being used by any business to help distinguish its goods or services from other identical or similar goods or services which are originating from a different business gets protected. The benefit of being distinct from other products will continue if the Renewal of Trademark is done from time to time. The owner of the registered Trademark should do the Renewal of Trademark within the prescribed time period to save the dilution of reputation and value of Trademark in the market. This process is lengthy and time-consuming. We at Corpbiz have experienced professionals to help you in enabling the Renewal process of Trademark. Our professionals will guide you with the process of Renewal. You just have to provide us with all the essential documents required for Trademark Renewal. Our professionals will assure successful and timely completion of your work. We focus to deliver quality services to our clients to strengthen our bond with clients instead of focusing on monetary benefits.
Read our article:How Can You Apply For Online Trademark Registration in India?
