Trademark is a kind of intellectual property like patent and copyright. Signs, logos, slogans, phrases which are registered and are used to differentiate a particular brand or business from others constitute a trademark. These are used to identify goods and services of a business and are there to help consumers recognise a brand easier.
According to Section 25 of the Trade Marks Act, 1999, “the registration of a trade mark shall be for a period of ten (10) years, but may be renewed from time to time in accordance with the provisions of this section.”
The renewal of trademark is necessary failing which the trade mark is removed from the Register of trademarks. We would be discussing the renewal and restoration of trade mark in this article.
Date of registration and period of registration
For the purpose of renewal, the effective date of registration is the date of the making of application. The registration of a trademark is valid for a period of ten (10) years from the date of registration which may be renewed from time to time in accordance with the provisions of Trademarks Act and Rules. The Office shall send a notice to the Registered Proprietor on Form O-3 intimating the approaching expiration of registration of trade mark and the condition as to renewal of trademark.
Application for renewal
An application for renewal of registration of trade mark shall be made on Form TM-12 at the appropriate office or Head Office of the Trademark Registry, at any time not more than six (6) months before the expiration of last registration of trademark.
Who can apply?
The application for renewal may be made by a person who is proprietor of the registered trade mark or by a person who is his duly authorized agent. In case of application by an agent, a request for change of address for service of applicant on Form TM-50 along with the duly executed Power of Attorney in his favour shall also be filed. In case the renewal application is filed by some person/ entity as proprietor on record or his agent, the application may be accepted subject to an affidavit stating the entitlement of the applicant in respect of the trademark, whereof renewal is applied, the entire chain of title along with supporting documents.
Prescribed fee for renewal
The fee for renewal according to the Trademark Rules is as follows:
- For the renewal of registration of trade mark under Section 25 for each class: ten thousand rupees (Rs. 10,000) for physical filing, nine thousand rupees (Rs. 9,000) for e-filing.
- Application for renewal with surcharge of registration of trade mark under Section 25 (3) for each class: five thousand rupees (Rs. 5,000) for physical filing, four thousand five hundred rupees (Rs. 4,500) for e-filing.
- Application for renewal with surcharge/ restoration and renewal of trade mark under Section 25 (3) and 25 (4) for each class: ten thousand rupees (Rs. 10,000) for physical filing and nine thousand rupees (Rs. 9,000) for e-filing.
In case the application for renewal is filed within six (6) months from the expiration of last registration, the same shall be accepted subject to payment of the abovementioned surcharge.
Removal and Restoration
In case no renewal fee is paid along with the surcharge within six (6) months from the expiration of last registration, the mark becomes liable to be removed from register. The Registrar has the power to restore the trade mark, provided, an application for restoration of the same is made on Form TM-13 with the prescribed fee of ten thousand rupees (Rs. 10,000) for physical filing and nine thousand rupees (Rs. 9,000) accompanied by a renewal application with prescribed fee and surcharge after six (6) months but within one (1) year from the expiration of last registration.
While restoring the trade mark, the Registrar may impose such conditions or limitations as he thinks fit. The Registrar shall, while considering the request for such restoration and renewal, have regard to the interest of other affected person.
In case no request for the renewal of registration of trade mark has been filed on behalf of the registered proprietor even up to one (1) year after expiration of last registration of the trade mark, the trade mark will be removed from the Register since the date of expiration of its last registration irrespective of the actual date of removal.
The request for renewal and/or restoration shall be processed through the Renewal module of Trade Mark Automated System and as per provisions of Trade Marks Act, 1999 and Trade Marks Rules, 2017. Irrespective of the actual date of renewal of a registered trade mark, the trade mark shall be renewed from the date of last expiration of its registration.
The intimation of the renewal will be generated from the system, accordingly and is then sent to the applicant. The renewals done through the system shall be sent through the system for publication in the trade mark journal.
In case of any objection to the renewal of registered trade mark, the Office shall generate a query letter through the system and send it to the applicant for the renewal accordingly and shall keep the request pending till the response of query letter is received. In case of removal of trade mark for non-payment of renewal fees, a letter notifying the removal of trade mark shall be sent to the registered proprietor by post and all removals done during a particular period shall be sent through the system for publication in the trade mark journal.
Conclusion
The process of trade mark renewal and restoration is quite easy when compared to the process of registration of a trade mark. All that is needed by the proprietor is being aware of the time period within which he is required to renew or restore the trade mark and the proper procedure of doing it. By the introduction of e-filing system in the trade mark industry, it is even easier for a proprietor, or user of a trade mark to file an application for renewal or restoration without physically going through the procedures and hassle.
Source: A draft of Manual of Trade Marks, Practice and Procedure
