What are the Risks If You Are Late in Trademark Renewal?

Trademarks Act, 1999 provides all the rules and regulations for obtaining and protecting the trademark in India. Trademark registration and renewal is the most important aspect for every company to protect its mark from being illegally used or infringed by others. A registered trademark can be protected for a period of 10 years and is required to be renewed to keep its possession and protect it. So, a very important question that arises is what are the risks if you are late in the Trademark Renewal?

Lateness in filing a trademark renewal application can result in too many problems for the trademark holder like a penalty, increased fees or losing the protection of a registered mark completely. Hence, this article will provide you with the information regarding the risks that the owner can face in filing a late trademark renewal application.

Trademark Renewal Procedure

Before talking about the risks in late Trademark renewal, a brief of the procedure to renew a trademark shall be discussed.

The owner of a well known trademark can either apply for the renewal of his mark by changing any sign or word in the already existing mark or apply for the renewal without any changes. The renewal can be done by submitting a renewal application in Form TM-R and can be submitted by the owner of the registered mark or by his agent on his behalf authorized by him along with the prescribed renewal fee. Latter the trademark will be published in the official gazette of the Trademark Journal on the approval of the application by the Registrar.

Once the application is reviewed for the quality, the registrar upon its satisfaction, accept the application and provide a Certificate of Renewal to the owner of the registered trademark. The renewal process can be done again before the expiry.

Risks in Late Trademark Renewal

Trademark may be taken by someone else

Although this might rarely happen, however, there can be a situation where a competitor can snap up the trademark and get it registered in his own name or register a very similar mark as its own. It is a well known fact that the marks which are identical to the already registered marks cannot get registered. But if such a trademark is no longer registered, then an identical mark or a similar mark can get registered.

If no pre-existing rights are interfering with the trademark registration of the competitor, then the mark shall never get rejected.  Under these circumstances, it is possible to lose the registered trademark by the competitor if the mark holder fails to file an application for its renewal.

Re-Registration of Trademark may not be permitted

On failing to renew a trademark, the trademark protection may be lost completely and if in the meantime an identical mark is also registered, the re-registration of the mark shall also not be permitted. According to the European Union Intellectual Property Office (EUIPO^[1]) guidelines and regulations, a proposed trademark may be denied to be registered if it is similar to an already existing mark or if it interferes with the pre-existing rights. If such problems arise after the passing of the renewal date and did not existed at the time of registration, even then the attempt to re-register the mark shall be denied.

Limited classes

In scenarios where an identical or similar mark is registered in the Nice Classes, in which the trademark was originally registered, then re-registration in the same classes shall not be allowed. According to the EUIPO guidelines and regulations, a proposed trademark may be denied to be registered if it is similar to an already existing mark for good or services. Hence, if a renewal date is missed and the owner pursues to re-register the mark at some later stage, then the goods and services against which he intends to use the same may be limited. Therefore, in such circumstances, the risks in late Trademark renewal exist a lot.

Limited Countries

In a similar manner, if the owner fails to renew a trademark in multiple countries and in the meantime a new identical or similar mark gets registered in some of the countries, then in such circumstances, the re- registration at the later stage may be limited geographically as well. Therefore, the risks in late trademark renewal on the inability to re-register the mark in some particular nations can be severe and rough. This would eventually hinder the business profits of the owner and the prospects significantly.

Late Trademark Renewal Fees

The trademark holder who delays the renewal of its registered mark undoubtedly faces additional costs in the form of late fees, regardless of whether any of the above mentioned potential issues that might arise or not. Even though a grace period is given by the national IP offices, after the renewal date, however, waiting until that moment shall bring great official charges as compared to filing the renewal application on time. Therefore, it involves the risks in late trademark renewal.

Benefits of Timely Trademark Renewal                                                    

To avoid the risks in late trademark renewal, it is essential for the owner of the registered trademark to renew it trademark timely with the Registrar’s office. The following benefits can be availed by the registered trademark owner on timely trademark renewal: –

• To safeguard his rights legally if the Trademark is being infringed by someone.
• Helps to keep the unique identity of the registered mark
• The renewal of the mark helps to keep the mark as an asset for the business which can be transferred, sold or assigned by the registered trademark holder.
• Ensures continuous protection and security of the registered trademark.
• Faces less chances of litigation when the owner abides with the rules and regulations to renew the trademark timely.

Conclusion

The loss of Trademark protection is the most serious consequence on failing to file an application for renewal of the trademark on time. It involves many risks in late trademark renewal by the owner. There is a possibility of losing the trademark to a competitor if the renewal of the mark is missed. Therefore, to avoid such risks as mentioned above in the article, it is the responsibility of the registered trademark holder to get its mark renewed on time before it’s too late.

Also, Read: What is the Trademark Renewal Procedure after Expiration?