Step-by-Step Guide on Trademark Registration Renewal Online

What is the importance of the renewal of Trademark?

The typical duration of a valid Trademark spans a decade. Should the Trademark holder seek to maintain the advantages of their registered Trademark, they must adhere to the prescribed renewal process. This renewal can be an ongoing process, meaning that after each 10-year period, the owner retains the right to renew their respective trademarks. The renewal of a Trademark can be accomplished through two methods:

• Application for renewal, accompanied by changes to any signs or words in the existing Trademark.
• Application for renewal without any alterations to the Trademark.

The renewal of a Trademark offers several benefits to its owner, which underlie the core purpose of trademarks. Some of these advantages include:

• Extending the time limit for safeguarding the rights associated with the Trademark. This grants the owners the freedom to shield themselves from unwarranted legal actions brought about by competing parties.
• Ensuring uninterrupted and continuous protection of the brand names for various businesses, safeguarding them from potential harm. Thus, the renewal process serves as a protective barrier for a company's brand value.
• Through Trademark renewal, the owner becomes eligible to file potential Trademark infringement suits and pursue the necessary remedies.
• Furthermore, a registered Trademark also opens up opportunities for the owner to generate revenue. The owner holds the right to license the Trademark to others in exchange for monetary compensation.

Documents required for Trademark Renewal

To initiate the renewal of a Trademark, the applicant must provide specific documents along with completed forms. These necessary documents include:

• A duplicate of the Trademark registration certificate.
• A photocopy of the applicant's photo identification and address verification.
• A Power of Attorney will be needed if an authorized representative or agent represents the applicant.
• An original copy of the Trademark registration application form (Form TM-A) that was originally used to apply for Trademark registration.

Forms to be filed for Trademark Renewal

When Trademark is due for renewal?

The Trademark authority has thoughtfully offered several options for renewing trademarks. The timeframe for filing Trademark renewal can be categorized into three segments:

• Renewal can be submitted up to one year before the expiration date in accordance with Rules 57 and 58 outlined in Trademark Rules 2017.
• Renewal can be submitted up to six months before the expiration date as specified in Rules 63 and 64 within Trademark Rules 2002.
• Renewal is also possible within six months following the expiration date of the registered Trademark.

What is the process for Trademark renewal?

For renewal of an expiring Trademark, either the owner or an authorized agent can follow the necessary steps outlined in the procedure below:

• Application Submission
  
  • Firstly, the owner or the authorized agent must submit the TM-R application form, along with the required documents as mentioned previously and the prescribed fees.
  • If the owner submits the application within the 6-month buffer period after the Trademark's expiration, they will need to pay additional surcharge fees, as discussed above.
  • It is advisable to initiate the filing process at least 6 months before the expiration date, as the renewal process typically takes several months to complete.
• Mandatory Notice
  
  • Within 1-3 months before the expiration date, the Trademark registrar is obligated to send an RG-3 notice informing the proprietor about the approaching expiration date. This notice is crucial, and if not issued by the Trademark office, the registrar will not have the authority to remove the expired Trademark from the registers.

Status check of the Trademark Renewal

Following the submission of the application form, the owner should monitor the application's status periodically. This is essential because there are time-sensitive actions that the applicant must undertake in coordination with the Trademark registry.

The practice of regularly checking the status should continue until the registry completes the entire application process. This includes formal assessments of the application's quality and various other examinations.

Advertisement in the Trademark Journal

Once the Trademark registrar has finished examining the application and officially accepted it, the Trademark will be published in the Trademark Journal. This journal serves as an official gazette that announces both accepted trademarks and those that may face objections.

During this stage, the public, represented by third parties, is provided with an opportunity to raise objections concerning the Trademark in question. If no objections are raised within the stipulated period, the Trademark will be recorded in the register of trademarks.

Publication of a Trademark in this register signifies the renewal of the Trademark for an additional 10-year period.

Consequences of not renewing the Trademark

Failing to renew a Trademark can have serious consequences. If the proprietor neglects to submit the application within the specified timeframe or does not pay the required fees, the registrar has the jurisdiction to remove the Trademark from the register.

However, this action can only be taken if the registrar has previously given notice by publishing an intention to remove the Trademark in the Trademark Journal. When a Trademark is drawn out from the register, the owner forfeits all associated rights. This includes the ability to file for infringement and protect the brand from competitors.

Fortunately, the Trademark office offers a second chance through a restoration process. If the owner fails to renew the Trademark even within 6 months after its expiration, they still have an opportunity for restoration within 1 year of the Trademark's expiration.

Trademark Restoration

The concept of restoration is outlined in Section 25(4) of the Trademark Act 1999. According to this section, if the owner wishes to reinstate a Trademark after the prescribed renewal period has lapsed, they can do so by submitting a restoration application. This application can be filed after 6 months but within 1 year from the expiration date.

Restoring a Trademark offers the proprietor an additional opportunity. It comes into play when the owner has failed to renew their Trademark within the specified timeframe.

Similar to Trademark renewal, the restoration process extends protection for another 10 years. However, during the restoration process, the registrar must take into account the interests of all concerned parties.