In India, the tenure of trademark validity spans a period of 10 years, as stipulated in Section 25 of the Trade Marks Act of 1999. On the 6th of March 2017, the Government of India (GOI) introduced the Trade Mark Rules of 2017. These rules were established to streamline the application process, setting standards for filing trademark applications, encouraging electronic filing, and simplifying the overall registration procedure.
What is Trademark Renewal?
Renewal of a registered trademark is possible for an additional 10-year term, provided that all necessary documentation is submitted and the requisite criteria are met.
Legal Protection: If you think someone is copying your registered trademark, you can go to court quickly to defend your rights.
Unique Identity: Registering your trademark is the first step in making sure your customers can easily recognize your products or services with your brand. It also stops others from using similar names or slogans for different things.
Business Opportunities: A trademark is like a valuable invisible asset for your business. You can make money by letting other companies use your trademark and pay you for it. You can also sell or transfer ownership to others who are interested.
Extended Ownership Rights: When you renew your trademark, you keep strong rights over your brand name. This helps protect the reputation and trust your brand has built over time.
Less Chance of Legal Battles: If you follow the rules and renew your trademark on time, you can avoid legal disputes. Renewing the trademark makes it hard for others to claim they own it.
Brand Name Security: Renewing your trademark ensures ongoing protection for your brand name. If you don't renew it, your legal protection for your brand name might not be possible.
Drawbacks Of Not Renewing Trademark:
Risk of Removal: If the owner doesn't renew the trademark by paying the renewal fee or filing an application, the trademark can be taken off the official register. To do this, the Registrar first tells everyone about it by advertising a notice.
Affects Everyone: It is not just the owner who suffers when a trademark is not renewed. It also impacts anyone who was given permission to use the trademark (like through a license) or those who bought it. Plus, it weakens the legal protection of the trademark.
Loss of Exclusive Rights: Registered trademarks have special rights that no one else can use the same mark. Not renewing means losing this exclusivity. Renewal helps prevent others from using your trademark.
Second Chance: The Trademark Act gives owners a chance. If they miss the renewal, they still have six months to renew it by filling out a special form (TM-10) and paying extra fees.
Tax & Process
Ensure possession of a registered trademark by the owner, backed by the Registration Certificate.
Assess eligibility for commercial use by reviewing evidence, such as copies of proof indicating the intention for commercial utilization.
Conduct a thorough search of the renowned and licensed trademark database to confirm the absence of similar trademarks.
Provide a Power of Attorney authorizing representation on behalf of the applicant.
Submit the applicant's Address Proof and Photo ID for verification.
Include a copy of the trademark registration application (Form TM-A).
In case of trademark conflicts, it is advisable to seek a legal opinion for a viable resolution, supported by proof of the conflicting trademark.
Prepare and obtain a renewal application to ensure compliance with relevant conditions.
Before proceeding with the renewal of a trademark, it is important to ensure that there are no similar or identical marks registered or pending registration. You can conduct a brand search on the official website of the Indian Trademark Office.
Application for Renewal:
To initiate the renewal process, an application can be submitted either six months before the trademark's expiration date or within six months after its expiration, subject to an additional fee. This application can be filed directly at the Trademark Office or electronically via the Indian Trademark Office website.
Upon submission, the Trademark Office will review the renewal application to ensure that all requisite information has been provided.
Publication in Trademark Journal:
Following a successful review of the renewal application, the trademark will be featured in the Trademark Journal for public notice.
A four-month window, starting from the date of publication in the Trademark Journal, allows third parties to oppose the extension of the trademark.
Upon a successful renewal process with no opposition or if opposition is resolved in favor of the trademark owner, the Trademark Office will issue a renewal certificate.
Completion of the renewal procedure requires the payment of applicable fees, which can be made directly at the Trademark Office or electronically through the Indian Trademark Office website.
When should one apply for the renewal of a trademark in India?
To renew a trademark in India, it is advisable to apply six months before the registration expires, along with the necessary fee payment.
Can a trademark be reinstated after it has expired?
Yes, a trademark can be reinstated within six months after its expiry to continue its use. An application for reinstatement must be submitted.
How long is a trademark registration valid in India?
A trademark registration in India is valid for a period of 10 years. The renewal process begins after the initial 10-year term.
What happens if a trademark is not renewed?
Failure to renew a trademark results in its removal from the register. Subsequently, another person can claim and register it under their name.
Are there any changes in the rights of the trademark owner after renewing a trademark?
Renewing a trademark does not alter the rights of the trademark owner. As long as the trademark remains valid, the owner retains all the rights acquired during the initial registration.