Trademarks are marks that are graphically represented which help people identify the company or person who produced the goods or services. They are easily can be registered under the Trademark Act, 1999 with the Trademark registry offices. There are five such trademark registry offices in India, Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. If a trademark is registered the holder of the trademark gets special rights to its usage and is protected by law from the infringement of such rights by others.
You can quickly establish your rights in court only if you believe your registered trademark has been infringed.
Create A Unique Identity
Registering your trademark is the first ever step toward ensuring your customer’s satisfaction to identify your services or products with your brand. After that, the law will then prevent any similar words or slogans from being registered for any other goods or services.
Create Business Chances
If you want your brand to be succeeded, then a trademark is an intangible asset that can be immensely valuable. Many companies can earn huge money in royalties through licensing agreements or even transfer of ownership to interested or to be involved parties.
Extension Of Ownership Rights
After the renewal of the trademark, over the brand name, one can benefit from violations of his/her rights over the ownership. It provides goodwill created by the brand and the permanent protection of your brand.
Fewer Chances For Litigation
It is possible to have seamless trademark protection without any chances of litigation if you abide by rules and renew your trademark on a timely basis. Other than the trademark owner, the renewal of trademarks makes it impossible for someone to claim rights over the registered mark.
Security For Brand Name
Renewal of trademark promises unhindered and continuous protection of the brand name and gives security. Disappointment and failure of renewal leads to a break of legal protection in Brand name.
In return for some monetary compensation, a trademark owner has the exclusive rights to license or assign the registered trademark to someone else. You should take note of it; as a result of this, one can profit from a trademark that is registered as well.
The consequences of not renewing the trademark are severe. In case, no application for renewal has been filed, or in case no fee for renewal has been paid by the proprietor, the Registrar may remove the mark from the register.
Before removing the trademark, the Registrar shall first advertise his intention to remove the mark by advertising the notice to remove in the trademark journal.
Failure to renew affects not just the proprietor but also all those people who are either assigned or licensed the trademark. It also affects your legal rights, by not renewing your trademark, in effect weakens your legal position. A registered trademark has the benefit of exclusiveness. Registration protects you from infringement claims. However, the most important benefit of renewal is that it deters other people from using your mark.
The Trademark Act is very sympathetic to the woes of the proprietor and has therefore provided another chance to renew the trademark within 6 months after the date of expiration of registration by a filing prescribed form [TM-10] and by paying the surcharge.
The proprietor must apply for renewal before the Registrar of the Trademark in a prescribed form [TM-R], on or before six months from the expiration date of the Trademark Registration. If no application for trademark renewal has been filed, it must be done in one to three months before the expiration of the registration.
After that, the Registrar must send a notice to the proprietor informing him of the upcoming renewal date. If a notice of renewal has not been served, you must keep in mind that no trademark can be removed. The proprietor has to pay trademark renewal fees as prescribed, along with the application for the renewal. Renewal can be done in two ways, those are:-
Simple Renew the Trademark
Renew the Trademark with changes/modification and alterations
TM-R form to apply for the renewal of a trademark
An authorized representative or agent can also make the application. It does not need to be filed by the registered owner of the Trademark itself. Trademark will be published in the official gazette of the Trademark Journal when the application is approved.
If the renewal process is done physically, the filing for the renewal costs 10,000 rupees. And if done online via e-filing, it charges 9,000 rupees.
Utilizing the requisite fees Form-18 is used to apply. The application is reviewed for excellence and quality, before it is finally approved for renewal.
It is vital to check the renewal application status in regular interval until the Registrar processes it – after filing the application of a trademark renewal. The trademark renewal needs many time-bound actions or responses from the applicant. Therefore, it is important to take the required action until the registration and continually check the status of the application.
The Trademark Journal is known to be an official gazette of the office of the Trademark (Registrar). The Trademark is publicized in the Trademark Journal if the Trademark Examiner administers and affirms that the application is suitable. Third-parties have a chance to oppose the registration of the mark while the application is advertised.
Here’s still hope, as you can apply for a restoration if you don’t apply for the renewal of the Trademark within 6 months after the date of expiry. You can apply for restoration by submitting an application and paying the prescribed fee Under Section 25(4) of the Trademark Act, 1999. Though, this can only be done within one year of the expiration of the registered Trademark.
Pre-existence of a registered trademark which is possessed by the proprietor/owner (Copy of the Registration certificate)
The determination and intention for commercial use should be examined for eligibility (Copies of the Proof of same).
You must make sure that there is no similar trademark by executing a Trademark Search of the well-known and licensed trademark database.
Power of Attorney to represent the Applicant
Address proof & Photo ID of the Applicant
Copy of Application form for trademark registration – Form TM-A
It is prudent to get a legal opinion for a feasible solution if there is a conflict of the trademark. (Copy of the Proof of Conflicted Trademark)
Prepare and procure a renewal application and thereby comply with the suitable condition.
Registered trademarks have a limitation period of ten years. If the trademark is not being used for a period of five years then it may be cancelled at the request of another party. The holder of a trademark is at the liberty to renew the trademark indefinitely every ten years. The Registrar gives a window of six months before the end of ten years to the holder of the trademark to renew their trademark and continue enjoying the rights awarded. In the case of a person failing to renew a trademark, the registrar will issue an advertisement in the Trademark Journal indicating the removal of the trademark. After the period of the ten years if the trademark is not renewed the person still has the option of restoration, which means renewal itself but with a fine.
One Time Fee
Service Provide Within 7 Days
One Time Fee
Service Provide Within 15 Days
Services Provided Before the Due Date
An online application for renewal of Trademark in India shall be made no earlier than 1 year before the expiry of 10 years from the date of application. The application of Trademark Renewal after the expiry of a period of 10 years can be made only by payment of additional fees. Hence applying for renewal 6 months prior to the expiry date is ideal.
The Registry of Trademark may condone the period of delay for renewal of trademark by 6 months after the expiry of 10 years. Online application for Trademark Renewal in India can be made after the expiry of 10 years with a payment of additional fees.
An online trademark renewal application shall be made with the help of Registered Trademark Attorney in India with the payment of renewal fee and additional or late fee (as applicable). A trademark renewal request can be filed six months prior to the date of trademark expiry. Before the expiry of the trademark, the registrar sends a notice to the owner regarding the expiry and the renewal fees and conditions. In case of lapse, the trademark gets removed from the register. An extension period of six months post-expiration is given in case one misses the deadline along with an additional late fee.
You can apply for the restoration of an expired trademark within 6 months from its expiry date to keep using it. But the delay of 6 months can be risky and shall attract additional fees and documentation.
Trademark Registration is a long process that takes a number of documents and requires more time than the renewal. A renewal is basically for continuing your ownership and use of the trademark, while registration is the initial process to get its exclusive ownership. After completion of every 10 years, the trademark needs to be renewed.
In the case of non-renewal, the consequences are severe. Because the trademark would be removed from the register and any other person can claim it and get it registered to their name.
Trademark renewal does not create any changes in the rights of the trademark holder. As long as the trademark is valid, the trademark holder would enjoy all the rights that he/she acquired during the primary registration.
Trademarks are usually territorial and are valid only in the country where they are filed. However, one can file for registration separately in individual countries, which can be an expensive proposition or you can submit an application via WIPO or CTM for registration across multiple countries.