India is growing leaps and bounds as a destination for commerce. With it, the demand for trademark registration is growing. Trademarks also need to be renewed every 10 years, so we’re going to see an even bigger jump in the total trademarks in existence in India over the years.
Preferably, the trademark renewal must be filed before the expiry of the mark. At least six months before, to be exact. The trademark renewal application form should be prepared and filed before the deadline to enjoy the continuous protection of the trademark without any chances of a litigation.
In doing so, the trademark renewal extends the term of the trademark by another decade. This is done by filing TM-12 with the prescribed fee of Rs. 4000. In case a person fails to renew the trademark, the mark becomes liable to be removed (though a trademark restoration is also possible).
This may seem like nothing at all, but a lot of companies often forget to renew their trademarks. Recently, Sony forgot to renew the trademark to one of its games, Bloodborne, risking abandonment of the mark entirely.
Given the importance of the trademark to a brand, renewal is crucial.
Trademark Renewal requests can be filed within six months before the expiry of registration or renewal. Before expiry of the last registration of a trademark, the Registrar will send a notice as a reminder to the registered trademark owner regarding the expiration and conditions as to the payment of the fees. If the registration is not obtained as per the prescribed conditions then the Registrar can remove the trademark from the trademark register.
If one misses the deadline for the trademark renewal request, it can be filed within six months after the expiry of registration or the renewal as the case may be in the prescribed manner along with a late filing fee.
The trademark renewal can done be in two ways:
1. You can apply renewal to change any sign or words in the already existing trade mark; or
2. You can apply renewal without a change.
Renewal Process and Forms
1. The application of renewal is made in form TM-12
2. The application can be made by either registered owner of the trademark or an agent authorised by him.
3. It is very important that you take the help of a professional to file for renewal of a trademark application to ensure that the mark is well protected. This is because you may want to broaden the scope of protection. After all, if your brand has survived 10 years, it’s likely that it would have outgrown the classes you had first registered it undder.
4. Filing a trademark renewal application extends protection by another 10 years. The trademark registrations are valid for another 10 years, and must be renewed again before expiry.
Check the status
After the filing of a trademark renewal, it is vital to periodically check the status of the renewal application until it is processed by the Registrar. The trademark renewal sometimes requires numerous time-bound actions or response from the applicant. Therefore, it is important to continually check the status of the application and take the required action until the registration.
The Trademark Journal is an official gazette of the Trademarks Registry. If the Trademark Examiner governs that the application is acceptable, then the trademark is advertised in the Trademark Journal. While application is advertised, third-parties have an opportunity to oppose registration of the mark. This process is not needed while renewing an existing trademark.
The renewal is important if the brand is still relevant. If not, it could fall to misuse. Let us take a look at the trademark renewal process.
How to Renew a Trademark
To start with, remember that you need to begin the process for renewal three to six months before the expiry of the trademark. The Registrar, after all, will only inform you about the expiry of the trademark very close to the last date, and it does take a few months to complete the procedure.
A form available, Form-18, is needed for the renewal process. The application should be accompanied by the requisite fee that needs to be paid to renew the trademark. The application for trademark renewal is then reviewed for quality before it is finally renewed. Once the reviews are done, the owner of the trademark is liable to receive a certificate of renewal, thus marking his continued ownership.
What If the trademark expires?
Well, if you don’t apply for the renewal of the trademark within six months after the expiry, there’s still hope, as you can apply for a restoration.
Under Section 25(4) of the Trademark Act, 1999, you can apply for restoration by submitting an application and paying the prescribed fee. However, this can only be done within one year of the expiration of the trademark.
Will this be successful? Maybe.
The registrar will look at the case, keeping in mind the interest of the affected parties. If such a request for restoration is filed, the registrar will then advertise it in the official journal. If there are no parties contesting the restoration, then the original owner of the trademark wins back the trademark. If, however, there are objections, the proprietor of the trademark will have to object to the same and fight the case for his trademark.
Safest option? It’s a simple procedure of renewal. The crux of the matter is the timing. If you file for the renewal well within time, there is no way you would lose your trademark.
Frequently asked questions
1. What is the benefit of a trademark renewal?
The trademark registration is a kind of an intellectual property protection, under this a word or a visual symbol being used by any business to help distinguish its goods or services from that of the other similar goods or services which may be originating from a different business gets protected. This benefit will continue if the trademark is renewed.
2. What are the documents needed for trademark renewal?
For filing the application of renewal of trademark, the following documents are required: A copy of the Registration Certificate, Power of Attorney, an ID & Address Proof of the Applicant and a copy of TM-1.
3. Can the renewal of trademark be filed after the expiry of trademark registration?
Yes, it is possible to do the trademark renewal anytime within 6 months of expiration of the expiry of the previous Trademark Registration by filing TM-12 with the prescribed late renewal fee.
A delay of more than 6 months can be risky and shall attract extra fees and documentation. If the renewal process does not get completed within 12 months of the expiration of the trademark, the trademark gets abandoned i.e. removed from the trademark register.
4. What is difference between a trademark registration and a Trademark renewal?
The trademark registration is quite different in documentation, procedure, the time required and fees from the renewal process. The trademark renewal is done within 6 months of completing the ten year time period. It is simple and easy to handle.