1. What is Trademark
Trademarks are marks that are graphically represented which help people identify the company or person who produced the goods or services. These marks can be registered under the Trademark Act, 1999 with the Trademark registry offices. There are five such trademark registry offices in India, Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. If a trademark is registered the holder of the trademark gets special rights to its usage and is protected by law from the infringement of such rights by others.
Registered trademarks have a limitation period of ten years. If the trademark is not being used for a period of five years then it may be cancelled at the request of another party. The holder of a trademark is at the liberty to renew the trademark indefinitely every ten years. The Registrar gives a window of six months before the end of ten years to the holder of the trademark to renew their trademark and continue enjoying the rights awarded. In the case of a person failing to renew a trademark, the registrar will issue an advertisement in the Trademark Journal indicating the removal of the trademark. After the period of the ten years if the trademark is not renewed the person still has the option of restoration, which means renewal itself but with a fine.
2. Need for renewal of Trademark
There are many advantages to renewing a trademark. Registration of the trademark awards the holder of the trademark many rights that are protected by law. It prevents the infringement of the trademark and also provide for restitution in case of such infringements. It also allows the holder the right to transfer the trademark to another person or company at their will. Licensing of trademarks are only possible if the holder of the trademark is has registered the trademark, therefore a registered trademark holds immense monetary value.
How to renew a Trademark
A registered trademark is only valid for 10 years, after which it needs to be renewed. The registrar of trademarks will send you a letter of reminder of the expiry of the trademark 6 months prior to its expiry. When you are going to renew a trademark you have two options:
- Renew the trademark as it is
- Renew the trademark with changes and alterations
- The application for the renewal of a trademark is the form TM-R.
- The application does not need to be filed by the registered owner of the trademark, it can be done by an authorised representative or an agent.
After filing the application one has to follow the status of the application in case any opposition is filed to the registration of the trademark. Such opposition can be filed by any person of the public.
- When the application is approved the trademark will be published in the official gazette the Trademark Journal.
- If the trademark has been published then the owner of the trademark has protection fro another ten years.
- The trademark can be indefinitely renewed.
The price for the renewal of a trademark depends upon whether it has been one in-person physically or it has been done online.
- If done physically the filing for the renewal costs 10,000 rupees
- If done online via e-filing it costs 9,000 rupees
For the renewal of a trademark, the following are required:
- A copy of the registration certificate
- Copy of form TM-A (form used for the original application for registering the trademark)
- ID and address proof of the applicant
- Power of attorney if the applicant is an authorised representative or an agent
3. Restoration of Trademark
There can be times that a person forgets to renew their trademark in the given time period. No worries there is still an option available in such cases. In the case of failure to renew one can then try to restore a trademark. Restoration of a trademark is allowed by the Trademark Act, 1999 under Section25 (4) where it allows persons to apply for the restoration of the trademark. Restoration can only be done within one year of the expiry of the registered trademark.
Restoration of a trademark includes an additional fee over the renewal fee of:
- 10,000 rupees if done by a person physically,
- or an additional 9000 rupees if done online.
You can find the whole pricing scheme for all the forms here.