Trade Mark Renewal

TRADEMARK PROTECTION AND ITS VALIDITY PERIOD

Once a trademark is granted protection, the validity period of such protection starts from the date of its registration. The registration of a trademark application is valid for a period of Ten years. After the validity of trademark registration is over, it can be renewed for another Ten years at a time, from the date of original registration or the last renewal, unless not removed or cancelled from the records of the Register.

TRADEMARK RENEWAL RULES UNDER TRADE MARKS RULES, 2017: The procedure for renewal of trademark registration or its restoration is prescribed in Chapter III “Renewal of Registration and Restoration” from Rule 57 to Rule 61 of the Trade Marks Rules, 2017. For a comprehensive idea, refer to the below information;

• The procedure begins with the renewal process, the Applicant of the registered trade mark or owner or assignee has to apply for renewal in Form TM-R along with providing supporting documents. The application for renewal can be made within one year before the expiry of the validity. However, the process shall only be valid after payment of renewal fees along with the application. But, before filing the renewal application, the proprietor is obliged to send a notice in writing to the registrar in the registered office, proclaiming the approach of the expiry date of the registered trade mark.  
• As per Rule 58, if no application for renewal is made then the registrar must notify in writing the approach of expiration date in Form RG-3 (previously known as ‘Form O-3’), to the registered proprietor. This notification shall be sent to the business address i.e. address of service in India as mentioned in the Register. This notice shall be sent within 6 months from the date of expiry of the renewal date.

In the case Kleenage Products (India) Private Limited V. The Registrar of Trademarks &Ors 2018 SCC (Online) Bom 46, the court held that the registration of a trademark cannot be cancelled or removed under the category of failure of renewal of trade mark registration if the registrar fails to send the notice under Form O-3 (now FORM RG-3) to the owner or user or applicant. This makes Form O-3 compulsory in the process of cancellation of the trademark.  

• The Registrar is empowered to extend the tenure of renewal only in case of technical error. When the applicant fails to comply with the provision of the Trade marks Act, 1999, for renewal of Trademark registration, the Trademark may get cancelled or removed. However, the applicant still has an option to restore the Registration, by filling restoration application in Form TM-R, within a period of one year from the date of expiry of the registration or last renewal, along with the restoration fee containing the renewal fees.
• A notice for the renewal or restoration of a trademark registration is required to be sent to the registered proprietor and every registered user and such renewal or restoration is then advertised in the Journal

• Even if a trademark is no longer officially registered because its owner failed to renew it then for subsequent one year after its original expiration date it is still treated as if it is on the Register when someone else applies for a similar or identical trademark. This rule is meant to prevent others from quickly taking over the removed trademark unless the Registrar or the High Court thinks that;

(a) The removed trademark was not used in a bona fide manner during the two years before its removal, or 

(b) the use of the new trademark will not cause confusion or deception due to any previous use of the removed trademark.

In case the proprietor of a trademark does not renew or fails to renew the registration of the Trademark, then the registered trade mark shall be removed. Thus, the proprietors have to file a fresh application, to register the subject Trademark once again.

Hence, being cautious is of utmost important for trademark owners. To keep a trademark registration alive, the trademark owner is required to renew the registration from time to time by paying the prescribed fee.