Trademark Renewal

Overview:

Trademark renewal is the process of extending the validity of a trademark registration beyond its initial term, typically lasting for 10 years. This renewal is crucial for maintaining exclusive rights to your trademarked assets. It’s advisable to initiate the renewal process at least six months before the expiration date to ensure uninterrupted protection.

Even if the renewal deadline is missed, there’s typically a grace period during which renewal is still possible, usually up to a year after expiration. However, during this time, the registrar may issue reminders or publish notices indicating their intention to withdraw the trademark if renewal is not completed. In India, the trademark renewal process can be conveniently conducted online within six to twelve months after expiration by paying a fee. This procedure, often referred to as ‘restoration’, allows trademark holders to reinstate their rights even after the expiration date has passed.

Benefits:

Some of the key benefits of trademark renewal include:

Legal Protection: Renewing your trademark ensures continued legal protection for your brand identity and associated goods or services. With a registered trademark, you have exclusive rights to use the mark in connection with your products or services, and you can take legal action against anyone who infringes upon your trademark rights. This protection is invaluable, particularly in industries where trademark infringement is common, as it allows you to enforce your rights in court and safeguard your brand reputation.

Business Opportunities: A registered trademark can serve as a valuable intangible asset for your business. As your brand becomes more successful and recognizable, the trademark gains value, potentially opening up various business opportunities. Through licensing agreements, you can grant others the right to use your trademark in exchange for royalties, generating additional revenue streams. Moreover, the trademark can be leveraged for brand extensions or partnerships, further expanding your business reach and profitability. In some cases, businesses may even choose to sell ownership of their trademark to interested parties, capitalizing on its perceived value.

Distinct Identity: Registering your trademark establishes a distinct identity for your brand in the marketplace. It allows you to create a unique association between your brand name, logo, or slogan and the goods or services you offer. By securing exclusive rights to your trademark, you prevent others from using similar or identical phrases or catchphrases in connection with competing products or services. This helps to prevent consumer confusion and ensures that your brand maintains its distinctiveness and reputation for quality.

Overall, trademark renewal is not just a legal requirement but also a strategic investment in your brand’s future success. By protecting your intellectual property rights, seizing business opportunities, and establishing a strong brand identity, trademark renewal plays a crucial role in maintaining a competitive edge in the market.

Timelines and Validity of a Registered Trademark

According to the provisions outlined in Rules 57 and 58 of the 2017 Trade Mark Rules, trademark renewal in India follows specific timelines and procedures to maintain the validity of a registered trademark:

Renewal Within One Year Before Expiration: Trademark owners are permitted to file for renewal up to a year before the expiration date of the trademark registration. This provision allows owners to proactively initiate the renewal process well in advance, ensuring that there is no gap in protection for their intellectual property.

Renewal Within Six Months After Expiration: In accordance with Rules 63 and 64 of the Registered Trademark Rules of 2002, trademark owners have a grace period of six months after the expiration date to submit the renewal application. This extended period offers a window of opportunity for owners who may have missed the initial deadline to still maintain the validity of their trademark registration.

Renewal Request Up to Six Months After Expiration: Additionally, trademark owners have the option to submit a renewal request up to six months following the expiration date. This provision allows for flexibility in the renewal process and ensures that owners have ample time to rectify any oversight or delay in renewing their trademark.

It’s crucial to note that failing to renew a trademark within the specified timeframe can have consequences. If a trademark is not renewed within six months of its expiration date, it will be deleted from the Register of Trademarks. This means that the trademark owner would lose the exclusive rights associated with the trademark, leaving the mark vulnerable to unauthorized use by others.

Checklist:

Here are some of the key steps involved in trademark renewal:

1. Determine the renewal deadline: The renewal deadline for trademarks varies depending on the country and jurisdiction.
2. Verify the trademark: Verify the trademark to ensure that it is still valid and that there are no legal disputes associated with it.
3. Prepare the renewal application: Prepare the renewal application and ensure that it is filled out accurately and completely.
4. Submit the renewal application: Submit the renewal application along with any required fees to the appropriate government agency.

Process:

The process of trademark renewal can be complex and requires careful attention to detail to ensure that the renewal is successful. At Corporate Raasta Consulting, we provide end-to-end support for trademark renewal, including verifying the trademark, preparing the renewal application, and submitting the application to the appropriate government agency. After trademark search, follow these steps:

Application for Renewal: Once the trademark search is completed and all clear, the next step is to submit the renewal application. This can be done either six months prior to the trademark’s expiration or within six months after its expiration. Much like filing paperwork for an important transaction, the renewal application can be submitted directly at the Trademark Office or conveniently online through the Indian Trademark Office website. There may be an additional fee associated with submitting the renewal application after the expiration date, but it offers a grace period for those who might have missed the deadline.

Application Review: After the renewal application is lodged, the Trademark Office swings into action, reviewing the submission meticulously. This review process ensures that all necessary information and documents have been provided accurately. It’s akin to a quality check before approving a crucial document.

Publication in Trademark Journal: Upon successful review, the trademark is slated for publication in the Trademark Journal. This serves as public notice of the renewal and allows interested parties to scrutinize the renewal application. It’s akin to making an announcement in a local newspaper, ensuring transparency and openness in the process.

Opposition Period: Following publication in the Trademark Journal, there is a designated period, typically four months, during which third parties can oppose the renewal of the trademark if they have valid reasons to do so. This period acts as a safeguard, providing an opportunity for any concerned parties to voice their objections, if any.

Renewal Certificate: Assuming there are no valid objections raised during the opposition period, or if the opposition is resolved in favor of the trademark owner, the Trademark Office issues a renewal certificate. This certificate serves as tangible proof of the trademark’s renewed status, akin to receiving a seal of approval.

Paying Fees: The final step in the renewal process involves settling the requisite fees. This can be done either directly at the Trademark Office or conveniently electronically through the Indian Trademark Office website. It’s akin to paying the toll fee for a smooth journey on a well-maintained road.

Documents:

Some of the documents required for trademark renewal include:

Duplicate of the Registration Document: This refers to a copy of the original registration certificate issued by the Trademark Registry. It serves as evidence of your trademark’s current registration status.

Copy of TM-A Form: The TM-A form is the initial application form used for registering the trademark. Including a copy of this form helps in verifying the original details provided during the trademark registration process.

Proof of Applicant’s Identity and Address: This could include documents such as Aadhar card, passport, driver’s license, or any other government-issued identification card displaying the applicant’s name and address. This ensures that the renewal application is being filed by the rightful owner or their authorized representative.

Power of Attorney (if applicable): If the renewal application is being filed by someone other than the trademark owner, such as a legal representative or agency, a power of attorney document may be required. This document grants the authorized person or entity the legal right to act on behalf of the trademark owner.

When a trademark renewal deadline is missed, there’s still a recourse available in India under the Trademark Act of 1999. Section 25(4) of the Act allows for the restoration of a trademark even after its expiration. In such cases, individuals or entities can submit applications for restoration, provided they fulfill the necessary requirements and pay the requisite fees.

Restoration of a trademark typically involves submitting an application along with the required documents and fees to the Trademark Registry. If the registrar is satisfied with the application and finds no valid reason to reject it, they may approve the restoration of the trademark. This allows the trademark owner to regain protection and exclusivity over their trademarked assets, even if the renewal deadline was missed.

Alteration or Adjustments to a Trademark Symbol or Emblem

Following is the process of making alterations or adjustments to a registered trademark symbol or emblem during the renewal process:

Submission of TM-R Application for Renewal: The first step involves submitting a TM-R application for renewal. This application can be filed by either the registered owner of the trademark or a representative authorized by the owner. This application signals the intent to renew the trademark for an additional term, typically lasting for another 10 years.

Renewal Application Submission: Once the renewal application is filed, it’s crucial to monitor the application’s status regularly. This ensures that any updates or requirements from the registrar can be promptly addressed, expediting the renewal process.

Initiating Renewal Process: It’s advisable to initiate the renewal process well in advance, preferably three to six months before the trademark’s expiration date. This early action allows sufficient time for processing and potential adjustments if needed, minimizing the risk of lapses in trademark protection.

Submission of Form-18: The renewal application is typically submitted using Form-18, along with the requisite payments as prescribed by the trademark office. This form serves as the official document outlining the renewal request and includes details such as the trademark registration number, renewal period, and any proposed alterations to the trademark symbol or emblem.

Assessment and Approval: Once the renewal application is submitted, it undergoes a thorough assessment by the trademark office. This assessment ensures that all required information and documents are provided accurately and that any proposed alterations comply with trademark regulations. The application may be reviewed for quality and adherence to legal standards before being formally approved for renewal.

Publication in Trademark Journal: The acceptance or denial of renewal applications is regulated by the Trademark Journal, an official publication of the Trademark register. If the renewal application is approved, an advertisement is published in the Trademark Journal, confirming the renewal of the trademark. This publication serves as official notification of the trademark’s renewed status and ensures transparency in the renewal process.

Forms to Submit Along with Fees

Following are the forms that must be submitted along with the requisite fees to the Department of the Registrar of Trademarks for the renewal of a trademark in India:

Notice from the Registrar: Trademark owners receive a notice from the Department of the Registrar of Trademarks approximately six months before the renewal deadline. This notice serves as a reminder to initiate the renewal process and ensures that trademark owners are aware of the impending deadline.

Renewal Application Form: To renew a trademark, the trademark owner must submit a renewal application form to the Registrar of Trademarks. This form, typically designated as Form TM-R, outlines the details of the trademark, including the registration number, owner’s information, and the desired renewal period.

Reinstatement Application (if applicable): In cases where a trademark has lapsed due to non-renewal within the permitted time frame, trademark owners have the option to reinstate the trademark. This involves submitting a reinstatement application along with the necessary fees to the Registrar of Trademarks. The reinstatement application allows trademark owners to restore their trademark rights and regain protection for their intellectual property assets.

Trademark Restoration Application (if applicable): If a trademark has been deleted from the Register of Trademarks due to non-renewal, trademark owners can apply for trademark restoration within a specific timeframe. The restoration application, accompanied by the requisite fees, must be submitted to the Registrar of Trademarks. Trademark restoration allows trademark owners to reinstate their trademark rights within six months to one year from the date of the mark’s last registration expiration.

Submitting these forms along with the appropriate fees within the designated timeframes, trademark owners can ensure the timely renewal and protection of their trademarks in India. Additionally, in cases where trademarks have lapsed or been deleted from the register, the reinstatement or restoration applications provide avenues for trademark owners to rectify the situation and regain valuable trademark rights.

How Corporate Raasta Consulting can help you with the process

Expertise in Trademark Law: Corporate Raasta Consulting has a team of legal professionals well-versed in trademark law and regulations. We provide expert guidance and advice on the trademark renewal process, ensuring that businesses comply with all legal requirements and deadlines.

Trademark Renewal Reminder Service: Corporate Raasta Consulting offers a trademark renewal reminder service to businesses. This service ensures that businesses receive timely notifications about upcoming trademark renewal deadlines, reducing the risk of inadvertent lapses in trademark protection.

Assistance with Renewal Documentation: We assist businesses in preparing and filing the necessary documentation for trademark renewal. This includes completing renewal application forms, gathering required supporting documents, and submitting the renewal application to the appropriate trademark office.

Monitoring Trademark Status: Corporate Raasta Consulting monitors the status of trademark renewal applications on behalf of businesses. We track the progress of renewal applications, address any issues or objections that may arise during the process, and provide regular updates to the business owner.

Resolution of Renewal Challenges: In case of any challenges or objections to the trademark renewal, Corporate Raasta Consulting provides legal support and representation. We help businesses navigate through opposition proceedings, respond to objections raised by third parties, and work towards resolving renewal challenges effectively.

Trademark Portfolio Management: Additionally, Corporate Raasta Consulting assists businesses in managing their entire trademark portfolio. This includes conducting trademark searches, registering new trademarks, and maintaining existing trademark registrations, ensuring comprehensive protection of intellectual property assets.