Trademarks are an important aspect of the growth of any business, as they protect the goodwill and brand image from possible damages. And so, protecting it is very crucial for businesses, including start-ups.
Trademarks are graphical images or signs that are capable of distinguishing the goods and services of one enterprise from another. Trademarks in general are words, images, symbols, alphanumeric combinations, numbers, sounds, etc., but there are other unconventional marks that can also be protected under a trademark, like smell, taste, color, etc.
Registration of trademarks is important for new businesses, and it is done as per the Trademarks Act of 1999. As per the Act, a trademark applicant gets protection for a span of ten years, which can be renewed in perpetuity after every ten years at the discretion of the trademark owner.
1. Importance of Trademark Registration
A registered trademark, if not used for a period of five (5) years after registration, could be cancelled at the request of another party, and hence maintenance and renewal of the trademark are considered core parts of trademark management. Trademark owners can file the application for renewal six months before the expiration period.
However, if the applicant fails to apply for renewal during this time, it can do so within six months from the date of expiration to file the application. Failing this, the registrar will publish an advertisement in the Trademark Journal about its intention to withdraw the trademark. After the renewal period is over and the applicant desires to renew its trademark, he can do so by the method of restoration, which means renewal with a fine. This generally occurs after six months and within one year. The entire process has been mentioned under Rules 57–61 of the Trademark Rules 2017.
2. Importance and Benefits of Trademark Renewal
Renewal of a trademark provides certain benefits to the trademark owner and is considered the basis of its business. There are a few significant benefits to the registration of a trademark and its continuous renewal, like:
i. Renewal of registered trademarks provides undisputed and continuous legal protection to the brand from potential damages;
ii. It gives you a prolonged and, until perpetuity, exclusive right to use the trademark without any fear of being sued for infringement by other parties;
iii. It stops people from copying or infringing your intellectual property rights and, if done, gives you the right to take legal action or file an infringement suit against them and claim damages or remedies;
iv. It gives you the right to assign or license your property to a third party in lieu of monetary benefits like royalty.
3. Eligibility Criteria for Renewal
4. Checklist for Trademark Renewal
i. Ownership of the registered trademark that is to be renewed;
ii. intention of commercial usage to be considered;
iii. Assurance that no similar mark is there through a proper trademark database
research;
iv. Adhere to the renewal procedure as per the Trademark Rules, 2017.
1. When there are no modifications to the existing mark; and
2. When the applicant wants to get any modification to the existing registered mark, like a change in words, sign, logo, or image.
3. The application for renewal or restoration is done through Form TM-R.
4. The application can be filed by any authorized representative or agent of the owner.
5.1 Documents Required
5.2 Forms For the renewal of trademarks, certain forms are required, which are mentioned in detail in the below table. The trademark registrar will notify the owner six months prior to the expiration of the registered mark, and if the owner fails to renew it within the permitted time frame, the mark shall be deleted from the registrar’s side. However, the owner still has the option to renew the mark within six months, but not later than one year of the expiration period, only after payment of the fine through the “restoration” method.
Form Type Purpose of the Form Physical Cost of
Filing
E-Filing Cost
TM-R
Click here for
TM-R
Application Form for renewal of
registered trademark to be used by
registered owner
Rs. 10000 Rs. 9000
Application for trademark Rs. 5000 plus Rs. 4500 plus
Documents Required for
Trademark Renewal
1. Copy of Registration
Certificate
2. Proof of Identification and
Residence
3. Power of Attorney, if the
applicant is authorized agent
or representative
4. Copy of Application Form
that was used to file original
application for registration of
mark – Form TM-A
5. Proof of Intention for
Commercial use
registration renewal with surcharge Renewal Fee Renewal Fee
TM – 18
Click here for
TM-18
Affidavit in support of the statement
of the case
– –
Table 1
6. Duration for Renewal
An application for the renewal of trademarks can be filed in either of the time frames mentioned below:
i. First, the applicant can file for renewal one year prior to the expiry of the original registered trade mark as per Rules 57 and 58;
ii. Second, as per Rule 58, the trademark can also be renewed six months before the expiration of the trademark period; and
iii. Thirdly, if the applicant fails to file for renewal during the above period, it may further apply within a time span of six months from the date of expiration.
7. Procedure to be followed
The trademark registration process is simple and hassle-free. It can either be done by the owner of the mark or by any authorized representative or agent of the owner on its behalf by performing all the necessary steps involved in the process. To understand the same, you can access the user manual for the TM Renewal Process.
5.1 Filing of Applications
i. The first step is that the applicant needs to file TM-R along with all the relevant documents mentioned above and the fees prescribed. The detailed procedure for this can be accessed through the User Manual link.
above.
ii. In case the applicant files a renewal application within six months of the expiration period, he should pay a fine or surcharge along with the prescribed fee as stated in Table 1.
8. Consequences of failure to renewal
The consequences of failing to renew the trademark are incredibly severe since it takes away all the rights from the proprietor of the mark.
i. If the applicant fails to file for renewal and does not pay the renewal fee, the mark will be removed by the registrar from the register and will be open for others to use freely.
ii. If the mark has been removed from the register, the owner loses all its proprietary rights, like assignment or licensing of the trademark, including filing a suit for infringement and protecting the goodwill of the brand. It affects your legal rights, which reduces your legal position with business competitors. It also affects the licensors and other people to whom the rights have been assigned.
iii. Registered marks give you exclusive rights, which are taken away if the mark is not renewed, thereby encouraging people to use your mark in any derogatory manner.
9. Conclusion
A registered mark gives a brand owner exclusive rights to establish their brand and grow their business in the market since it protects you from all kinds of potential damages.
Hence, it is advisable to renew the mark every ten years, which can subsequently be renewed for an indefinite period. The Registry provides one with ample support to register and renew their mark even when they fail to do so within the required time frame, and therefore, the owner should consider renewing their mark whenever it is required.
