The Procedure of Trademark Renewal
In the middle ages, two basic kinds of marks could be found. First, the merchant’s mark which was regarded as establishing the ownership of goods to which they were affixed. Secondly,
the production marks whose purpose was to indicate origin or source. Trademark’s as marks of origin, were affixed by the maker of bricks, leather, books, weapons, cooking-ware, and other things even in the ancient cultures. As India is growing vault and bounds as a destination for commerce. With it, the requirement for trademark registration is growing. There also needs to do a Trademark Renewal every Ten years.
What is Trademark Renewal
When one gets there goods or services registered and receives a trademark certificate from the department, that registration has done for ten years. After the expiry of that ten years, the owner is supposed to get it to renew within the time prescribed by the Trademark Act. Otherwise, the registrar may remove the trademark from the register.
According to section 25 of The Trademark Act, 1999, clause 2 the registrar shall, on the application made by the registered owner of a trademark in the prescribed manner and within the prescribed period and payment of the prescribed fee, renew the registration of the trademark for a duration of ten years from the date of expiration of the initial registration or of the last renewal of registration.
If the time prescribed has been expired and the conditions have not duly complied with, the registrar may remove the registered trademark from the records.
Provided that application cannot be removed by the registrar if an application is made in the prescribed form and the given fee and overcharge is paid within six months from the expiration of the time last registration of the trademark and shall renew the registration of the trademark for ten years.
Trademark Renewal Procedure
Trademark Renewal plead can be filed within six months before the expiry of registration or renewal. Before the expiry of the original registration of a trademark, the registrar will dispatch a notice as a reminder to the registered trademark possessor with the payment of fees and expiration. If the registration is not done as per the define conditions, then the registrar can remove the trademark from the trademark register.
If anyone misses the deadline for the trademark renewal request, it can be filed in another 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 be done be in two ways: (a)You can apply renewal to modify any sign or words in the already existing trademark; or (b)You can apply renewal without a change.
STEPS FOR TRADEMARK RENEWAL
To start with, first, you need to begin the process for renewal within three to six months before the expiry of the trademark. The registrar, after all, will only acquaint you with the expiry of the trademark to the last date, and it does take a few months to complete the procedure.
For Renewal of Registration, An application shall be made on Form TM – R and made at any time not more than six months before the expiration of the last registration of the trademark
An agent or the applicant can file for the Trademark Renewal by login to the IP India Online Filing of Trademark and select the option “TM – R” by selecting New Form Filing with their application number.
The second step in the procedure to fill all the mandatory fields, details related to the applicant, applicant’s agent, Trademark Type, and click SAVE button.
Next step to proceed further is mandatory documents upload and click on Proceed button, some of the documents are listed below:
While filing the application form, one has to select the right category under which the application form is to be submitted. The categories are divided into four parts, and they are:
- Small Enterprise
- Individual/Sole Proprietor
Under Individual/Sole Proprietor category Power of Attorney notarized on a stamp paper of Rs. 100 (One Hundred) need to be filed in a pdf form. Likewise, different documents need to be submitted according to the categories mentioned above by the applicant during the time of filling the application.
After submitting all the required documents as mentioned above, click on submit button request and proceed for sign document
The last step for the trademark renewal is Govt. Fee
The application should be a company with a requisite fee that needs to be paid to renew the trademark. The application for trademark renewal is then examined for quality before it is finally renewed. Once the examination is done, the owner of the trademark is liable to receive a certificate of renewal, thus marking his continued ownership.
Check the status
Once the trademark renewal filed, it is important to timely check the status of the application until the registrar processes it. The trademark renewal sometimes requires time-bound actions or responses from the applicant. Therefore, it is important to constantly check the status of the application and take the necessary action until the registration.
What If the trademark expires?
In case you don’t apply for the renewal of the trademark within six months after the expiry, there’s still another chance, as you can apply for restoration.
Under Section 25(4) of the Trademark Act, 1999, one can apply for submitting an application for restoration by paying the fees. However, this can be done within one year of the expiration of the trademark.
In Indian Companies Act v Through the Ministry of Commerce (2013), in this case, the mark was registered with effect from 6.11.1945 as proof by a registration certificate dated 10.02.1949. The registration renewal from time to time and was last renewed for 7 years on 6.11.1995 till 6.11.2002. Thereafter due to incidental, the registration was not renewed. Sometimes at the starting of 2012, then the petitioner got to know that mark had been removed due to non-renewal. The petitioner had not received any notice as per Section 25(3) of the Trademarks Act, 1999 notifying it of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained. The court held that it is true there has been an inordinate delay. If that delay has led to the registration of the trademark in favor of someone else, it may be a different matter depending upon the facts of the case. No one else has applied for or claimed any right of registration in the said trademark in the meantime.
Therefore, in the facts and circumstances of the case, the respondents are directed to grant restoration and renewal of the trademark registration within two weeks of the petitioner paying the requisite charges and complying with the requisite formalities.