Introduction:
Trademarks are perpetual rights that must be renewed on a regular basis to avoid non-use cancellation. India is becoming increasingly popular as a trade and investment hub. As an outcome, demand for trademark registration is skyrocketing. In India, a registered trademark can be renewed an infinite number of times for a charge, after which it would be withdrawn from the trademark registry. Renewal of a trademark is applicable for ten years.
The Trademark Law in India has undergone a significant transformation with the Trademark Rules of 2017, as well as the nation is now in a phenomenal and developing period for trademark registration. Over the last generation, there has been tremendous growth in trademark registrations, and India is quickly becoming one of the most popular places for commercial ventures.
Trademark Renewal Process
The procedure of obtaining everlasting trademark protection does not end with trademark registration. Trademark Renewal is the process of renewing an existing trademark every ten years. A trademark registration will not provide an individual with lifelong protection.
Trademarks are valid for ten years and must be renewed once that period has passed. If an individual forgets to renew his or her trademark right, he or she would forfeit his or her claim. The claim is about the right of ownership. So long as registration-based protection exists, the burden of evidence is with others to deny ownership. To keep the authority of ownership, trademark renewal is required. Others are kept out of one’s trademark’s domain.
The Registrar has the authority to withdraw a trademark from the trademark register if the registration is not obtained in accordance with the required requirements. If an individual misses the timeframe for submitting the request, one can submit a renewal application together with a late fee, six months after the mark has expired.
In India, the procedure of trademark renewal is conducted in two main ways:
- Renewal of the trademark to alter any symbol or phrases in an existing trademark.
- Renewal of the trademark without any modification.[1]
The Renewal Procedure: What an Individual Should Know!
- Individuals and companies must fill and submit a form (TM[2]-12) to apply for trademark renewal.
- This form must be filed within 6 months of the ten years’ expiration date.
- Renewal requests can be submitted by registered trademark proprietors or agents authorized by them to act on their behalf.
- People should seek expert assistance when renewing a TM application to ensure that the procedure runs smoothly and without any hitches or setbacks. Even little blunders during the operation might result in severe security failures and other issues. As a result, it is important to get legal advice in order to guarantee that the trademark is safe and secure.
- A Trademark Renewal application prolongs the life of the trademark for an additional ten years, and businesses must file for renewal before this term expires to maintain safety.
- Users must monitor the status of a TM renewal application after filing it until the Registrar completes the procedure. The applicant may be required to complete several time-bound activities and replies during the procedure. As an outcome, companies must continue to monitor the progress of their application and take necessary measures as needed.[3]
Why is Trademark Renewal Such an Important Procedure?
Renewal of a trademark is a very rare occurrence. It is, nevertheless, one of the most critical tasks a company can undertake to ensure that its intellectual property is safeguarded. It is undeniably a time-consuming and at times strenuous procedure that needs meticulous attention to detail and continuous vigilance. Renewals of trademarks, such as renewals in multiple regions, might be difficult depending on the size of a company. This necessitates a specialized worldwide understanding of IP rights and renewal processes in different regions, as well as timely preparation and filing of the necessary papers.
Trademark Renewal in India
The trademark registration protects intellectual property by securing a phrase or a graphic sign that a company uses to help differentiate its goods or services. Because trademark renewal is necessary every 10 years, the sector will experience an even greater increase in the number of registered trademarks in the coming years.
The application for renewal should be submitted to the Trademark Office at least six months before the mark’s expiration date. Prior to the actual deadline, businesses must prepare and submit the application form. This will not only ensure that their trademark is protected indefinitely, but will also eliminate the possibility of a lawsuit.[4]
Trademark Renewal Filing Fee
Businesses may prolong their security for another decade with the help of timely renewal. To apply for renewal, businesses must complete and submit Form TM-12, as well as pay a cost of INR 4000. If a person or corporation fails to renew their TM, the mark is held responsible for its deletion, and the holders must restore their TM for longer security.
Time Duration to File for Renewal
The Trade Marks Act, 1999and the Trade Marks Rule,2017specifies the time limit for filing a trademark renewal application.
Section 25(3) of the Trade Marks Act, 1999 and Rule 57 of the Trade Marks Rule,2017 talks about the period for filing the renewal application.
Rule 57(1) states that “An application for the renewal of the registration of a trademark shall be made in Form TM-R along with the fee as prescribed in the first schedule and may be made at any time not more than one year before the expiration of the last registration of the trademark.”[5]
Rule 57 (2) states that “A request for renewal of registration of the trademark filed within the prescribed time shall be allowed unless the trademark has been removed or cancelled or is otherwise not renewable under any of the provisions of the Act and rules or by any order of the competent court or the Registrar.”[6]
According to the proviso to Section 25 (3), “Registrar shall not remove the trademark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trademark.”[7]
The trademark will be deleted from the registry when the extended period of the time has expired.
Documents Required for Renewal
1.A copy of the Certificate of Registration.
2.Applicant’s identification evidence.
3.Power of Attorney.
4.The Applicant’s home address.
5.A duplication of TM-1 Form.
6.A TM-12 Form Renewal Application.
7.Properly filled Form-18.
8.A fee of Rs.400 is charged by the government.
Filling Out the Trademark Renewal Form
The form can be filled out both in person or online. The trademark, on the other hand, can be renewed and reinstated. As a result, you must determine what you desire.
For MSME and individual start-ups, the renewal fee is Rs 5000 in person and Rs 4500 for e-filing or online filing. The renewal fee for each class under section 25 is Rs 10,000 in person and Rs 9000 for e-filing.
Most individuals prefer to fill out forms online since it is considerably cheap. There are additional benefits as well, such as:
- Renewal is easier and faster than in-person renewal.
- Easy-to-follow instructions make filing a breeze.
- Keep a check on your trademark status on the internet on a regular basis.
Analysis of the Trademark Renewal Status
It is very vital to keep an eye on the renewal application until it’s approved by the Trademark Registrar. This one is critical since the applicant must provide many time-bound replies throughout the procedure. As a result, it is essential to keep track of renewal applications and perform the necessary steps until the trademark is registered.
If the registrar approves your trademark application, it will be published in the Journal. It is completed in order for a third party to oppose the trademark registration. When it comes to renewing an existing trademark, nonetheless, this isn’t needed.[8]
Trademark Renewal Checklist
- The trademark must be registered, owned by the owner, and renewed on a regular basis.
- Make a trademark search to ensure there are no other trademarks that are identical to yours.
- If there is a trademark dispute, seek legal advice for a possible solution.
- Compose a renewal application and, as a result, adhere to all applicable requirements.
If the Renewal Term Expires, What is the Protocol?
However, if someone forgets to refresh the mark on the job, one may still expect that they will be restored.
In accordance with Article 25(4) of the Trademarks Act of 1999, a request to be re-established may be filed and a specified fee paid. However, just one year after the expiry of the trademark is possible.
The registrar will verify that the cases take into account the interests of the other parties. The registrar will publish it in a journal after the submission of restoration, and the owner can then recover it, assuming there are no protests from the third party.
Significance of Trademark Renewal
A trademark renewal comes with a number of benefits. When a trademark is registered, the proprietor of the trademark receives a slew of legal benefits.
- It outlaws trademark infringement and makes provisions for compensation in the case of a breach.
- It also allows the trademark proprietor to easily transfer the trademark to another individual or business.
- A registered trademark has a high monetary value since trademark licensing is only feasible if the trademark holder has registered the brand.[9]
Repercussions of Non-Renewal
The registrar will delete the mark from the trademark journal if the proprietor fails to file a renewal application or pay a fee. However, before removing the mark from a journal, he must give notice of his intention to do so. Non-renewal will have serious repercussions since others will be able to duplicate or use your mark without your permission. It will also have an impact on the trademark assignee. Because you are no longer qualified to claim it, it will limit your legal rights.
Rules Concerning Trademark Renewal in Other Countries
The procedures for trademark renewal are mostly identical to those in the United States and the European Union. Renewals will typically take place every 10 years, except in Canada, where they will take place every 15 years.
The most significant differences are generally seen in:
• Renewal registration timeframes
• Fees
Renewal costs, as previously stated, can differ significantly between nations and regions. They can also differ based on the number of classes that need to be renewed. In certain places, such as the United States, application and renewal fees are constantly increasing.
Conversely, there are instances when application and renewal prices are lowered, such as when the Chinese Ministry of Finance announced a 50% drop-in trademark fees in 2017, reducing renewal fees from about US$290 to US$145.
Renewal registration durations vary significantly between nations and regions. For example, in China, the United Arab Emirates, and Australia, a trademark renewal must be filed within 12 months of the expiration date. Meanwhile, in Cuba and South Africa, a renewal must be lodged within six months of the expiration date.[10]
Conclusion
Trademark registration is a legal requirement for anybody who works in the business world. The primary purpose of a trademark is to safeguard its owner’s ethical and legal rights from being exploited by a third-party rival. In India, a trademark usually has a certain period of registration, after which you must renew it for another year to continue enjoying the benefits of registering. The practice of registering a trademark is getting increasingly widespread. Trademarks must be renewed every 10 years. The trademark renewal application must be submitted as soon as feasible following the expiration date of the trademark. The trademark renewal application form should be prepared and filed before the deadline to ensure continuous trademark protection without any of the danger of a lawsuit.
References:
[1]Renewal of Trademark Registration in India | Trademark Registration, Apply trademark (July 2nd, 2018), www.applytrademark.co.in/renew-trademark/#Documents_for_The_Renewal.
[2] TM-Trademark
[3] Rudra Krishna, Everything You Should Know About the Renewal of a Trademark, Vakilsearch| Blog (June 11,2011), https://vakilsearch.com/blog/everything-you-should-know-about-the-renewal-of-a-trademark/#:~:text=TM%20renewal%20is%20mandatory%20every%20ten%20years%2C%20and,and%20file%20the%20application%20form%20before%20the%20deadline.
[4]Trademark Renewal, S.S Rana & Co,https://ssrana.in/ip-laws/trademarks/trademark-renewal-in-india/#:~:text=The%20prescribed%20period%20for%20filing%20the%20trademark%20renewal,the%20trademark%20will%20be%20removed%20from%20the%20register.
[5]Trade Marks Rule,2017.
[6]Trade Marks Rule,2017
[7]Trade Marks Act, 1999
[8]Renewal of Trademark Registration in India | Trademark Registration, Apply trademark (July 2nd, 2018)
[9] Komal Singh, The Procedure behind Trademark Renewal in India, Corpbiz (28 Dec, 2020),
https://corpbiz.io/learning/the-procedure-behind-trademark-renewal-in-india/
[10]Bradstock AG, Trademark Renewals | Complete Guide, Brandstock.com
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