Things You Must Know All About Trademark Restoration in India

With the ever-increasing growth in the Indian economy, the entrepreneurs are working hard to establish their business in the market and make their brands renowned and trustworthy. In this process, it is equally important to have the trademark to protect their brand, and for this, registration of Trademark under the Indian Trademarks Act, 1999^[1] is necessary. However, trademark registration is valid only for a period of 10 years and has to get renewed with the Registrar of Trademarks office. Sometimes in the failure of renewal, the trademark holder can seek Trademark Restoration to restore its trademark. Therefore, this article will help you to understand the things you must know all about trademark restoration in India.

Understanding Trademark Renewal

The registration of a trademark is only for a period of 10 years, and on the expiry of it, the trademark holder is required to renew his mark in order to keep it permanently. The Renewal of Trademark has to be filed either online or offline with the Registry of Trademarks office. The application should be filed along with the prescribed fees. Before the date of expiry of the registered trademark, the process of renewal of the mark should begin at least six months before.

The renewal of the trademark helps the trademark holder to keep his mark permanently and perpetually. The trademark holder can renew his mark as many times and for how many years as he wishes to keep the trademark registered and active.

But if the registered trademark holder fails to renew the mark before the expiry of it or within the stipulated time period and prescribed fees, he shall lose the registered trademark and have to undergo adverse effects related to it.

What happens if one fails to renew a Trademark?

If any Trademark holder fails to renew a trademark following effects could take place: –

• The Trademark shall be removed from the register of trademarks by the registrar, making the trademark accessible for any person or a company.
• It affects the legal rights, putting the owner at risk or unprotected from any violation of his mark.
• The company or brand can no longer be protected by the infringement claims.

Trademark Restoration in India

According to Section 22(4) of the Trademarks Act, 1999 the trademark holder can apply for the restoration of a trademark. Trademark Restoration means getting back the trademark which has been removed from the registers of the trademarks at the Registry. The removal of the mark is due to not filing for the timely renewal of the registered trademark.  And therefore, the removed trademark can be restored by filing an application for the trademark restoration to the registry of a trademark.

The restoration application can be filed even after 6 months and within 1 year from the date of expiry of the last registered mark and, the application in Form TM-R along with the restoration fee and prescribed renewal fees must be filed.

On the request of the trademark restoration in India, the registrar should consider the interest of all other affected persons. Once the restoration request is accepted, the registrar shall make an advertisement in the trademark Journal regarding the Restoration of Trademark.

Need for Trademark Renewal and Trademark Restoration in India

• In or to restore the legal rights connected with the registered trademark
• To protect the brand value of the business from the third party
• To get the benefit of claiming remedies for Trademark infringement
• To be eligible to file a Trademark infringement
• To protect the business and the individuals related to it

The Requirement for Trademark Restoration in India

In order to apply for the restoration of the trademark in India, the following requirement needs to be fulfilled: –

Form TM-12

This application in Form TM-12 is filed when the process of trademark renewal is within the timeline. No surcharge fee is required in it.

Form TM-10

This application in Form TM-10 is filed when before the expiry date, the renewal process is done within the six months. A renewal fee is required under this application.

Form TM-13

When a registered trademark is removed from the registers of Trademark by the Registrar, an application in Form TM-13 is filed. The restoration of a trademark is done with a period of 6 months to 1 year from the date of expiry of a registered trademark along with the prescribed restoration fees and renewal fees.

Procedure for Trademark Restoration in India  

• A trademark holder can apply for the Trademark Restoration if he did not file for the renewal of trademark within the prescribed time period and no application is filed before the expiry of a trademark for its renewal.
• A Trademark Restoration application must be filed with a period of 6 months to 1 year after the date of expiration of Registered Trademark.
• The application in Form TM-13 must be filed for the Trademark Restoration
• The Registrar, on the receipt of the application, shall make an advertisement in the trademark Journal regarding the Restoration of Trademark. Such an advertisement is done to invite any objections from the people who do not want the restoration of such trademark.
• If no objections are raised by the people and when the time period of filing a Trademark objection has ended, the registrar shall enter the Trademark in the Registers of Trademarks.
• Such entry in the registers of a trademark must specify that the “Trademark is renewed for a period of 10 years”.

Conclusion

The registration of a trademark is a type of intellectual property rights protection. The purpose of using a trademark by a company is to distinguish their products from the other products in the market. A trademark is registered to protect a brand from any infringement. Such benefit of protection continues if the trademark is renewed from time to time. Sometimes, on the failure of the renewal of the mark, the trademark holder gets an opportunity to get its trademark back on the trademark register. This can be done through the process of Trademark Restoration in India.

The trademark Restoration can be done by an owner of a trademark with 6 months to 1 year from the expiry of the then registered trademark. A trademark holder is required to follow all the rules and regulations for the restoration of a trademark in accordance with the Indian Trademarks Act, 1999.