Obtaining the trademark registration is a crucial step for any business towards protecting its intellectual Property Rights (IPR) but maintaining the registration as ‘valid and subsisting’ is equally vital and should not be ignored. Law Firms like Stratjuris Law Partners (SJP) has softwares that provides for automatic reminders for renewal of trademarks (Indian or International filing) /patents and designs and which in turn assists the clients in maintaining their IPR portfolio.
Unlike different types of IPR i.e., patent, design, copyright, it is ‘Trademark’ that never becomes a public domain, and all rights of registered mark can be passed from generation to generation for perpetual period, provided it is maintained and renewed on-time and as per The Trade Mark Act,1999 and The Trade Marks Rules, 2017.
VALIDITY OF TRADEMARKS
In India, Section 25 (1) of The Trademarks Act, 1999 provides that registration of trademark shall remain valid for a period of ten (10) years, and it can be renewed from time to time in accordance with the law. The ten (10) years renewal date is calculated from the date of filing of an application.
E.g., If trademark application ‘X’ is filed on 21st February 2020, and after the completion of entire procedure, trademark ‘X’ receives registration in 2021. In such case, despite obtaining registration in 2021, the registration date of trademark ‘X’ is 21st February 2020 and trademark ‘X’ shall remain valid and subsisting for 10 years i.e., up to 21st February 2030.
WINDOW PERIOD
Under the Trademarks Rules[1], the proprietor of a registered mark, (either on his own having its address in India or through his authorized representatives/agents/Advocates), can file an application for renewal within one (1) year before the expiry of the last registration of the mark.
E.g., If the trademark ‘X’ is valid and subsisting up to 21st Feb 2030. The earliest date on which a renewal request can be filed is 21st Feb 2029.
An application for the renewal of a trademark can be made online under Form TM-R along with the prescribed fee[2] of INR 9000 per mark per class. The fees for physically renewing the trademark application are 10,000 INR per mark per class. It is pertinent to note that although the Trademark Rules, provides discount for Individual/start-up/ MSME at the time of filing trademark application, however no such discounts are available at the time of renewal of trademark application.
O3 NOTICE
The Registrar shall send a notice at the prescribed address of service informing the proprietor of the trademark of the renewal deadline. This notice is called as O-3 Notice.
It is to be sent by the Indian Trademark office before the validity of his trademark expires. Section 25 (3) of The Trademarks Act, 1999 provides that it is mandatory for the Indian trademark office to serve an O-3 notice to the registered proprietor or its agent/advocates informing about the date of expiration of the trademark and the requisite fees. A registered trademark can be removed from the register of trademarks for non-renewal only if the O-3 notice has been duly served on the trademark owner/trademark agent and the registered proprietor has failed to timely file a renewal request despite service of the aforesaid O-3 notice.
GRACE PERIOD
The registered trademark is not immediately removed from the Register of trademarks if the registered proprietor fails to renew the trademark within the above-mentioned window period despite the O-3 being served upon him. Section 25(3) of the Trademarks Act, 1999, provides six (6) months grace period from the expiration of the date of last registration, for filing an application for renewal by payment of an additional surcharge fee.
E.g., If the trademark ‘X’ was last valid up to 21st February 2030 and no renewal has been filed. In such case, the mark ‘X’ can still be renewed within six months period i.e., until 21st August 2031 by paying an additional surcharge fee.
The online fees payable within six months grace period is 4500 INR in addition to the fees for renewal of mark. (i.e., 4500 INR + 9000 INR = 13,500 INR per mark per class). The fees for physical payment within six months is 5000 INR only (i.e., 5000 INR + 10,000 INR = 15,000 INR per mark per class).
If an application for renewal is not filed within the 6 months grace period from the expiration of the date of last registration, the trademark registration is deemed to have expired, and the trademark shall be removed from the register of trademarks.
RESTORATION PERIOD
Still further, the law provides the concept of restoration of mark. As the name suggests, restoration of the trademark provides another opportunity to the proprietor of mark to restore its registration. Section 25(4) of the Trademarks Act, 1999, states that an application for restoration of a trademark registration can be filed after 6 months but within 1 year from the date of the expiry of the trademark registration by payment of the restoration fee.
E.g., If the trademark ‘X’ was last valid up to 21st February 2021 and the six-month grace period i.e., up to 21st August 2021 has lapsed, the registered proprietor can file an application for restoration of trademark ‘X’ from 21st August 2031 until 21st Feb 2031.
The online fees payable for restoration of per trademark per class is 9000 INR in addition to the fees for renewal of mark. (i.e., 9000 INR + 9000 INR = 18,000 INR per mark per class). The fees for physical restoration after six months and within a year is a 10,000 INR in addition to the fees for renewal of mark (i.e., 10,000 INR + 10,000 INR = 20,000 INR per mark per class).
PROCEDURE
The renewal and restoration of trademark is simple. No documents for proof of any use of a mark is required, nor any declarations/affidavits are required to file application for renewal. Only trademark application number and a Power of Authorization (if the Applicant is an authorised representative or an agent) would suffice to file a renewal of the mark.
Renewal applications are a matter of right within the statutory period hence it is not reviewed for any objection or registrability or its use by the Trademarks Registry. Needless to state that the Registrar while considering the request for restoration or renewal will have regard to the interest of other affected parties.
If the registration of a mark has been renewed within the statutory period and with the requisite fee, it is published in the Trademarks Journal and thereafter the computer-generated renewal intimation letter is sent to the proprietor of registered mark or its agent on record informing that the validity of the trademark is extended for next 10 years.
NON-RENEWAL
Non-renewal of Trademark means removal of trademark and the registered proprietor loses all protection that comes along comes along with registration of mark. As per Section 59 of the Trademarks Rules, 2017, the removal of the trademark is also advertised in the Trademarks Journal. Despite its removal, it shall deemed to be on the Register of trademark for one year after the date of removal for purpose of registration for any another trademark.
CONCLUSION:
A registered proprietor gets the cumulative period of two years to file for renewal of trademark and it is his prima facie duty to ensure the renewal of a trademark is filed every 10 years for enjoyment of the rights as registered proprietor.
ALERT: If you have missed the due date/expiry date for renewal of mark/restoration falling between 15.03.2020 till 28.02.2022, in such case, you still have time 90 days from 01.03.2022 for renewal[3]. Moreover, the government fees for such renewal is 9000 INR only and no additional surcharge or fees for restoration will be applicable.
This article was first written in 2022, the Laws, Fees and procedures are subject to changes. For any further assistance for renewal of trademark? Send us an email at tm@stratjuris.com
[1] Rule 57 of Trademarks Rules, 2017
[2] The Fees are prescribed in the First Schedule of The Trademarks Rules, 2017
[3] SUO MOTU WRIT PETITION (C) NO. 3 OF 2020 dated 10th January 2022
