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What is the Trademark Renewal Procedure after Expiration?

Trademark Renewal Procedure after Expiration
Japsanjam Kaur Wadhera
| Updated: Dec 28, 2020 | Category: Trademark

A trademark is a logo, word, design or any other mark which is used by the companies for their brands to distinguish it from the other brands in the market. The protection of brand is the first priority of every company. When a brand is registered under the Indian Trademarks Act, 1999, the registered trademark holder can protect its brand for a period of 10 years. After the expiry of the registered mark, the trademark holder is required to renew its mark to continue the possession of the trademark. Therefore, this article will give detailed information on the Trademark renewal procedure after expiration of a registered trademark.

How to preserve Trademark rights?

Trademark preservation rights are only given to a registered mark. If a company fails to renew the trademark, he/she shall lose all the rights and protection that comes with the registered trademark. A company that registers a trademark gets the advantage of the legal presumption of ownership. No person can cause the infringement of the registered trademark by using it without the permission of the trademark holder and the burden of proof is on the other person to disprove such infringement.

Trademark Renewal Procedure

The request for the Trademark renewal can be filed within 6 months before the expiry of the registration period. The Registrar shall send a notice to the registered trademark holder as a reminder regarding the expiration and the conditions to the payment of the fees, before the expiry of the last registration of a mark. If the renewal is not obtained within the prescribed time period, the registrar can remove the trademark from the trademark register.

However, if one misses to renew the mark within the prescribed period, the restoration of a trademark is allowed by the Trademarks Act, 1999[1] under section 25(4) where a person can apply for the trademark restoration within 6 months to 1 year after the expiry of the mark along with the prescribed late filing fee.

The Trademark renewal procedure can be done in two ways: –

  1. The registered trademark holder can apply for the renewal to change any word or sign in the already existing trademark.
  2. Or the renewal can be applied without any change.

The process and forms for Trademark Renewal

  1. The applicant is required to submit the renewal application in Form TM-R.
  2. The application can be submitted either by the registered trademark holder or by an agent on his behalf, authorized by him. The Trademark shall be published in the official gazette of the Trademark Journal once the application is approved by the registrar.
  3. The applicant is required to file the application along with the prescribed renewal fee in order to renew the trademark.
  4. Further, the application will be reviewed for the quality before the renewal.
  5. Once the application is reviewed, the registrar shall provide with the certificate of renewal to the registered holder. The filing of a Trademark renewal application extends the possession and protection of trademark by another 10 years. And the renewal process can be done again before the expiry.
renewal process after expiry

Status Check

Until the registrar processes the renewal application, it is important for the applicant to check the application after filing for the renewal of the trademark. The renewal of a trademark requires many time-bound actions and responses from the applicant. Therefore, the applicant has to take the required action until the trademark renewal procedure after expiration is completed and continuously check the status of the application.

Trademark Journal

Trademark Journal is known to be an official gazette of the Trademark Registry. Once the examination officer approves and affirms the application, such application is then published in the Journals of Trademark. And thereby, the third- parties get a chance to make opposition for the registration or renewal of the mark, while the application is advertised.

Trademark Restoration

A person can apply for the restoration of trademark if he misses out and does not apply for the renewal of the trademark before its expiry with the Registrar. The restoration application can be made within 6 months to 1 year after the date of the expiry of the mark.  Section 25(4) of the Trademarks Act, 1999 allows the submission of restoration application for a trademark. However, restoration can only be done within one year of the expiry of the registered Trademark.

Documents required for Trademark Renewal Procedure

  • A copy of the Certificate of Registration
  • The applicant’s identity proof
  • Power of Attorney
  • The applicant’s Address proof
  • Copy of the Application in form TM- A (form used for the original application for registration of trademark)

Benefits of Trademark Renewal

Safeguard legally

Trademark renewal procedure helps the trademark holder to safeguard his rights legally if his trademark is being infringed by someone else. He can take a legal action against such person and has a right to sue the infringer.

Distinct Identity

A registered trademark for a brand helps to create a unique identity for such a brand in the market. And the customers can easily identify such unique product or service offered by the company.

Asset for business

A registered trademark becomes an intangible asset for the business which can be immensely valuable. The company can earn money and royalty by having a right to transfer, sell or assign such registered trademark.

Security for the brand

The renewal of a trademark ensures the continuous protection of the brand and provides security to it. If the brand is not registered, no legal protection is provided to it.

Less chances for Litigation

Trademark renewal procedure helps the owner of the mark to protect his trademark by not facing any chances of litigation if he abides with the rules and regulations to renew the trademark timely.

Conclusion

Trademarks Act, 1999 provides with the rules and regulations which are required to be followed by the holder of the registered trademark during the Trademark renewal procedure after expiration of his mark. The renewal of trademark is important for the owner of the trademark, to protect his mark from being infringed and used by others. Therefore, to continue to have the protection and enjoy the benefits of a registered trademark, timely renewal of mark is necessary.

Also, Read: How to Avoid Rejections of Trademark Registration?

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Japsanjam Kaur Wadhera

Japsanjam Kaur Wadhera is an Advocate and has completed her BA.LLB (Hons) and has experience of writing various research papers during her college time. Earlier she was working as an Associate Advocate in a reputed Law Firm. She has an extreme interest in writing legal content and her core area falls under legal enactments, tax and finance.

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