Trademark is perpetual in nature, and registration of a trademark is valid only for a period of 10 years. However, after competition of ten years, the Applicant can renew the trademark for another ten years, and this can go on for eternity. Hence, a trademark application, once registered, must be renewed every ten years, failing which the trademark is liable to be removed from the Register of Trademarks. An application for the renewal of a trademark shall be made under Form TM-R along with the prescribed Government fee, anytime within six months prior to the expiry of the registration of the mark. Failure to submit the requisite fee along with the Form TM-R may cause the trademark to be removed from Register. Trademark renewal preserves those rights which are only available to a registered mark. In case the proprietor fails to renew the trademark, he loses all the protection that comes along with registration. For example, a registered trademark has the benefit of a legal presumption of ownership. That means that the burden of proof is on others to try and disprove your ownership.
After making a request, one of our representatives will get in touch with you to understand your requirements and will brief you regarding the process of Trademark Renewal.
After the consultation, you will be asked for certain necessary details with respect to the trademark that needs to be registered. Post that, our Trademark Agent or Attorney will prepare the relevant documents that are required for filing the renewal application.
After careful examination of the required documents, our Attorneys file the Trademark Renewal Application in the prescribed form (Form TM-R) along with relevant documents.
Once the application is made, and the documents are acknowledged and verified by the Registry, and confirmation on the renewal application is confirmed, which generally takes around 4-5 months. Once received, your Trademark will be renewed for another 10 years.
- Proof of Applicant – The certificate of registration along with PAN card or any government ID proof and Address Proof of the Applicant.
- Trademark Certificate – Registration certificate of the Trademark that is issued by the Registry.
- Power of Attorney – A document that gives authority to the attorney(s) allowing them to file the renewal application of trademark on behalf of the Applicant.
- Copy of the TM-A Application – The copy of the application that was filed with the Trademark Registry during the registration process.
1. What are the benefits of Trademark Renewal?
Trademark renewal keeps the trademark registration intact and helps the trademark owner to retain the enforcement rights that are accorded by the Trade Marks Act.
2. What are the consequences of failure of renewal of trademark?
In case no application for renewal has been filed, or in case no fee for renewal has been paid by the proprietor, the Registrar may remove the mark from the register.
3. How would the applicant be affected on the event of non-renewal of Trademark?
Applicant shall lose all the protection that comes along with registration. For example, a registered trademark has the benefit of the legal presumption of ownership. That means that the burden of proof is on others to try and disprove your ownership.
4. What if the renewal of a trademark application is not made within the stipulated time of six months before the expiry of the trademark registration?
In case you forgot to file your trademark renewal within 6 months of the expiry of the trademark registration, you can still do the trademark renewal anytime within the period of 6 months after the expiry of the previous period. Trademark renewal application can be filed with form TM-R with the prescribed renewal late fees.
5. What if the trademark expires i.e. renewal of trademark application is not even made after the expiry of the trademark registration?
In such a case, the proprietor can apply for restoration of the trademark.
6. What is trademark restoration application?
In case of non-renewal of trademark after the expiry of the trademark, the Applicant can apply for a trademark restoration application with the Registrar.
7. What is the process of trademark restoration?
Trademark restoration application has to be made from 6 months to 1 year after the date of expiration of such registration. The proprietor has to file a prescribed form [TM-13] to request restoration. The Registrar shall advertise the mark once again and invite objections from people who have reason to believe that the trademark should not be renewed or restored.
8. Whether there will be any changes in the rights after renewal of trademark?
Trademark renewal does not create any changes in the rights of the trademark holder. As long as the trademark is valid, the trademark holder would enjoy all the rights that he/she acquired during the primary registration.
9. Is the trademark valid outside India?
Trademarks are usually territorial and are valid only in the country where they are filed. However, one can file for registration separately in individual countries which can be an expensive proposition or you can submit an application via WIPO/Madrid or CTM for registration across multiple countries.
10. When should the Renewal Application be filed?
An application for the renewal of the registration can be filed with the Registrar under form TM -R along with the fees prescribed. The renewal application shall be made at any time not more than 1 year before the expiration of the last registration of the trademark.
11. Is there a provision to file renewal application after the expiry of term?
Yes, Section 25(4) of the Trademark Act, 1999, provides that if the trademark has been removed due to non-payment of fee within the prescribed time. The Registrar shall after 6 months and within 1 year from the expiration of the last registration on payment of the prescribed fee, if satisfied, may renew the application.
12. Is a Trademark Renewal Application examined in India?
Yes, the examination includes whether the application has been filed in time and whether the same has been filed by the proprietor of the mark on record.
13. When should the Renewal Request for an International Application be filed?
Any international registration may be renewed for a period of 10 years from the expiry of the preceding period by the mere payment of the basic fee and subject to Article 8(7) of Madrid Protocol of the supplementary and complementary fees provided for in Article 8(2). 6 months before the expiry of the term of protection, the International Bureau shall, by sending an unofficial notice, remind the holder of the international registration and his representative, if any, of the exact date of expiry. Subject to the payment of a surcharge fixed by the Regulations, a period of grace of six months shall be allowed for renewal of the international registration.