Trademark renewal

Introduction

A trademark is a distinct sign, symbol, word, logo, or combination thereof that identifies and distinguishes the goods or services of one enterprise from those of others. In India, trademarks’ legal protection and regulation are governed by the Trademarks Act of 1999 and the Trademarks Rules of 2017.

According to Section 25(1) of the Trade Marks Act, once a trademark is registered, it remains valid for a period of ten years starting from the date it was registered. This can be extended after the expiration of the initial 10 years.

This article covers the complete process and legal significance of trademark renewal in India under the Trademarks Act, 1999, and the Trademarks Rules, 2017. It explains what trademark renewal entails, its procedure, the documents required, applicable forms and fees, and the legal and commercial benefits of timely renewal. It also highlights the consequences of non-renewal, and the procedure for restoration of a removed trademark, and concludes with the importance of timely compliance to ensure uninterrupted protection of brand rights and reputation.

What is trademark renewal?

Trademark renewal is a process by which the protection of a registered trademark is extended beyond its initial term of registration. In India, once a trademark is registered, it is legally protected for a duration of ten years from the date of registration. After this period ends, the trademark must be renewed. Renewal plays a crucial role in protecting the owner’s exclusive rights over the mark and ensuring that the brand remains protected from infringement.

The procedure for trademark renewal is outlined under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. To renew a trademark, the owner must submit a renewal application using Form TM-R to the Indian Trademark Registry, along with the prescribed renewal fee.

In case of failure to renew the trademark within the prescribed time limit, it may be removed from the Trademark Register, and the exclusive rights may lapse. Renewal ensures that the trademark owner enjoys legal protection.

Procedure for Renewal

Filing the Renewal Application

The renewal of a trademark officially begins with the submission of Form TM-R, as prescribed under Rule 57 of the Trade Marks Rules, 2017. Filing can be done through the official IP India portal.

The applicant must provide certain essential details like the registration number of the trademark and its current legal status. If the renewal is being carried out through a trademark agent or legal representative, a valid Power of Attorney must also accompany the application.

A trademark renewal application can be filed within one year before the date on which the trademark is set to expire. In case this window is missed, renewal may still be sought within six months, but only by paying an additional late fee. However, if the deadline is missed entirely, the mark becomes vulnerable to removal from the register. If the renewal isn’t filed on time, the applicant must submit a restoration request under Rule 60, which not only increases the expenses but also makes the process more complicated.

Scrutiny and Examination by the Registry

After submission, the application is examined by the Trademark Registry to ensure that all legal requirements are satisfied. The Registrar checks whether the application was filed within the permitted time and whether all relevant documents and prescribed fees are in order.

If the Registry detects any discrepancy, such as an incomplete form, unpaid fees, or classification issues, it may issue a formal objection. The applicant is generally given 30 days to respond. If the response is not submitted on time or the discrepancies are not addressed properly, the application may be rejected or delayed.

Publication in the Trade Marks Journal

After the application passes the examination stage, the renewal information is officially published in the Trade Marks Journal. Any third party may file an opposition in 4 months under Section 21 of the Trade Marks Act, 1999. If an objection is filed, the trademark owner will be given a chance to respond. If the matter remains unresolved, the Registrar may call for a hearing and make a decision.

If no opposition is raised or if any objections are successfully resolved, the trademark renewal proceeds without further hurdles.

Issuance of the Trademark Renewal Certificate

After the opposition period and resolution of any related disputes, the Trademark Registry formally issues a Trademark Renewal Certificate. This certifies that the trademark has been renewed for a further 10-year period from the date of the previous expiration.

Trademark Restoration Following Expiry

If the renewal deadline and the six-month grace period have both passed without action, the trademark is officially removed from the register. However, the law allows the owner to apply for restoration within one year from the date of expiry. This request must be accompanied along with the prescribed fees, can be done through ipindia.gov.in.

Once the application is received, the Registrar examines the application. If no discrepancy is found or if the Registrar is satisfied, the request for restoration is accepted, and the trademark is published in the Trademark Journal.

If no opposition is filed or if the applicant overcomes any objections, a Restoration Certificate is issued.

Legal Consequences of Non-renewal

If a trademark is not renewed on time, it can be removed from the register, leading to the loss of exclusive rights to use the mark. Without renewal, the owner cannot enforce trademark rights or prevent others from using a similar mark. The trademark becomes vulnerable to being registered by others, weakening the original owner’s position. While restoration is possible within one year of removal, it’s not automatic and requires valid reasons. Overall, non-renewal risks losing legal protection.

Documents required

1. Form TM-Ris is the prescribed form for renewal of a trademark under the Trade Marks Rules, 2017. It must be filed six months before the expiry of the current registration or within a grace period of six months after the expiry (with applicable fees).
2. Power of Attorney is required only when the renewal is filed by a trademark attorney or an authorized agent; a power of attorney is submitted to establish their authority to act on behalf of the owner.
3. Proof of identity and address: Though not always mandatorily providing documents is recommended.
4. Copy of the Trademark Registration Certificate.
5. Affidavit of Use: The Registrar may request an affidavit to ensure genuine intent or prior use of the trademark.

Forms and fees

Benefits of renewal

Legal protection- Renewal ensures that the trademark remains legally protected under the Trademarks Act, 1999. If the trademark isn’t renewed, the legal protection it offers lapses, leaving it vulnerable to misuse or infringement by others.

Preservation of Exclusive Rights – A trademark owner has certain exclusive rights, which are rights, though can be preserved by renewing the trademark.

Strengthening of Legal Position –The trademark owner has the right to initiate legal action in case of infringement. Renewal of a trademark also provides this right, which strengthens the owner’s position in defending their mark and seeking remedies for any unauthorized use.

Maintaining Brand Identity- Every business has a distinct brand value in the marketplace. Without renewal, the mark may lose its distinctiveness, potentially eroding the brand’s reputation and value in the market.

Business and Commercial Benefits A renewed trademark enables the trademark owner to leverage their intellectual property for business opportunities such as licensing, franchising, and brand expansion. A valid trademark is an asset that increases business credibility and value.

Conclusion

Trademark renewal is a crucial step in preserving a brand’s legal identity and commercial strength. Under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, renewal ensures that a registered trademark continues to enjoy statutory protection, allowing the proprietor to maintain exclusive rights and prevent misuse by others.

Missing the renewal timelines can lead to the cancellation of a trademark, weakening the brand’s legal standing and market position. Though restoration is allowed within a limited period, it involves additional costs and formalities.

Timely renewal is a simple yet vital legal action that protects years of brand building, reputation, and investment. For any business or individual relying on their trademark, proactive compliance with the renewal process is not just good practice but is essential for long-term brand security.

References

1. The Trade Marks Act, 1999– https://www.ipo.gov.in/tmrAct_1999.pdf
2. The Trade Marks Rules, 2017– https://www.ipo.gov.in/TMRules_2017.pdf
3. IP India – Trade Marks Section– https://ipindia.gov.in/trade-marks.htm
4. Trademark Renewal in India, iPleaders– https://blog.ipleaders.in/trademark-renewal-india/
5. Trademark Renewal Procedure, LawBhoomi-https://lawbhoomi.com/trademark-renewal-procedure-in-india/
6. Trademark Forms and Fees, IP India – https://ipindia.gov.in/form-and-fees-tm.htm
7. Trademark JournalSearch, IP-India https://search.ipindia.gov.in/tmrpublicsearch/jsp/journal/journal_search.jsp