Trademark Renewal

What is the process of renewing a trademark?

Trademark registrations are initially valid for 10 years and can be renewed indefinitely. The renewal process typically begins six months prior to the expiration date. Even if overlooked, which is not uncommon even for large organizations, a reminder will be sent to the registered address before the expiration date.

If a renewal application is still not submitted, the registrar may issue a notice in the Trade Marks Journal indicating its intention to withdraw the trademark. However, this action is more likely to occur within one year after the expiration date.

In India, the trademark renewal process can be completed online within six to twelve months after expiration by paying a fee through a procedure known as ‘restoration’.

Required Documents for Online Trademark Registration Renewal in India

  1. A copy of the registration document.
  2. Copy of the TM-A form (the original form used for registering the trademark).
  3. Proof of the applicant’s identity and address.
  4. If the applicant is an authorized representative or agency, a power of attorney may be required.

Reinstating a Trademark In cases where individuals fail to renew their trademarks within the designated timeframe, there is still an option available. If the trademark is not renewed, one can attempt to restore it. The Trademarks Act of 1999 allows for the restoration of a trademark under Section 25(4), permitting anyone to submit applications for restoration.

Steps Involved in Trademark Renewal Process in India

  1. Trademark Search: Prior to renewing a trademark, it is essential to verify that there are no similar or identical marks already registered or pending registration. This can be done through a brand search on the Indian Trademark Office’s website.
  2. Application for Renewal: The renewal application can be submitted either six months before the trademark’s expiration or within six months after it expires, with an additional fee. Applications can be filed directly at the Trademark Office or online via the Indian Trademark Office website.
  3. Application Review: Upon submission, the Trademark Office will review the renewal application to ensure all necessary information has been provided.
  4. Publication in Trademark Journal: After reviewing the renewal application, the trademark will be advertised in the Trademark Journal.
  5. Opposition Period: Third parties have a four-month window following the publication in the Trademark Journal to oppose the renewal of the trademark.
  6. Renewal Certificate: If there are no oppositions or if the opposition is resolved in favor of the trademark owner, the Trademark Office will issue a renewal certificate.
  7. Payment of Fees: The final step in the renewal process involves paying the required fees. Payments can be made directly at the Trademark Office or electronically through the Indian Trademark Office website.

How Trademarkwala Facilitates Trademark Renewal Procedures

Upon submission of your details, a representative will promptly reach out to discuss the process, associated costs, and assess your specific requirements. Depending on whether you require trademark reinstatement or renewal, applicable charges may vary.

The government fee for trademark renewal stands at ₹5000, while restoration payments amount to ₹8000.

Renewal Request Form Our legal experts will initiate the preparation of necessary documentation. Alongside renewal fees, submission of Form-10 or Form-12 to the registrar is requisite.

Acknowledgment We’ll keep you updated on the progress of your application. Typically, within four to five months, you’ll be notified of the renewal status, confirming another 10-year extension.

Importance of Trademark Renewal Renewing a trademark offers several advantages. Upon trademark registration, the holder acquires various legal protections. It serves as a deterrent against trademark infringement and provides recourse in case of any infringements.

Moreover, it grants the trademark holder the flexibility to assign the trademark to another entity at any time. The financial value of a registered trademark is substantial since trademark licensing is contingent upon registration by the mark’s owner.

Checklist For Renewal Of A Trademark

  • The owner’s prior ownership of a registered trademark that is subject to renewal.
  • To determine eligibility, the intent for commercial usage should be examined
  • Make sure there are no trademarks that are similar by performing a complete research of the renowned and licenced trademark database
  • A legal opinion should be sought if there is a trademark conflict in order to find a workable solution
  • Obtain and prepare a renewal application, and then adhere to the necessary conditions.

Advantages of Trademark Renewal

  1. Legal Protection: Renewing your trademark ensures that you have established rights that can be enforced in court if someone infringes upon your registered trademark. This is particularly crucial in industries where trademark infringement is prevalent.

  2. Business Opportunity: A trademark, as an intangible asset, holds significant potential value if your brand becomes successful. Examples such as Tide, Nike, or McDonald’s demonstrate how businesses can generate substantial royalties through licensing agreements or even by selling ownership stakes to interested parties.

  3. Distinct Identity: It’s essential for clients to associate your brand with the goods or services you provide. By renewing your trademark, you maintain the distinctiveness necessary for brand recognition. Moreover, trademark registration prohibits the use of similar phrases or catchphrases by law, reinforcing your brand’s uniqueness.

Trademark Renewal Online - Timeframe for Renewing a Trademark

As per rules 57 and 58 outlined in the 2017 Trade Mark Rules:

  1. Renewal can be initiated up to a year prior to the expiration date.

  2. An extension can be filed within six months following the expiration date, as specified by rules 63 and 64 of the Registered Trademark Rules of 2002.

  3. Furthermore, a renewal request may be lodged up to six months after the expiration date.

Failure to renew a trademark within six months of its expiration will result in its removal from the Register of Trademarks.

Forms Required for Trademark Renewal in India

To renew a trademark in India, the following forms need to be submitted along with the appropriate fee:

  1. Notice from the Registrar of Trademarks: The Registrar of Trademarks is obligated to send a notice to the trademark owner six months prior to the renewal deadline. Failure to renew within the specified timeframe will result in the trademark being removed from the Register of Trademarks.

  2. Application for Restoration: In cases where a trademark is not renewed within the stipulated time, it may be reinstated by submitting an application along with the required fee.

For trademark restoration, the following conditions apply:

  • The trademark can be reinstated after six months but no later than one year from the expiration date of its last registration.
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