Author- Kimaya Dalvi
In India, the renewal process for trademark registration can be initiated within six months prior to the expiration date of the registration or within six months after the expiration date, by filing Form TM-R with the Indian Trademark Registry.
Steps for Renewal
- Renewal application:
The first step in the trademark renewal process in India is to apply for renewal with the Indian Trademark Registry. This application must be filed on Form TM-R, which is available on the official website of the Trademark Registry. The application can be filed either online or offline.
The application should be filed within six months prior to the expiration date of the registration or within six months after the expiration date. If the application is filed after the expiration date, an additional fee for late renewal is applicable.
- The renewal application must include the following information:
- The trademark registration number
- The class or classes of goods or services for which the trademark is registered
- The name and address of the trademark owner
- The date of registration of the trademark
- The date of expiration of the trademark registration
- Examination of the application:
After the renewal application is filed, it is examined by the Trademark Registrar to ensure that all the requirements are fulfilled. The Registrar checks the application to ensure that it meets all the legal requirements for the renewal of the trademark registration.
If there are any discrepancies or deficiencies in the application, the Registrar may issue an examination report to the applicant. The applicant must address all the issues raised in the examination report within the stipulated time frame.
- Publication of the renewal application:
If the trademark renewal application is found to be in order, it is published in the Trademark Journal. The publication of the renewal application is a mandatory step in the renewal process, and it provides an opportunity for the public to oppose the renewal within three months of the publication of the renewal application.
The opposition can be filed on various grounds, such as:
The trademark is identical or similar to an existing trademark
The trademark is likely to cause confusion or deception
The trademark is descriptive or lacks distinctiveness
The trademark is against the public interest
If an opposition is filed, the Registrar will hear both parties and make a decision based on the evidence presented.
- Issuance of renewal certificate:
If no opposition is filed or if the opposition is unsuccessful, the Registrar will issue the renewal certificate to the applicant. The renewed trademark registration will be valid for another ten years from the date of expiration of the previous registration.
The renewal certificate contains the following information:
- The trademark registration number
- The date of renewal of the trademark
- The date of expiration of the renewed trademark registration
The renewal certificate is an important document, and it should be kept safely by the trademark owner.
- Payment of renewal fees:
When submitting the renewal application, the applicant must pay the renewal fees. The number of classifications of goods or services for which a trademark registration is issued affects the renewal costs.
A late renewal fee is imposed if the trademark renewal request is submitted after the trademark registration has expired. The number of months that have passed since the trademark registration’s expiration date is used to determine how much the late renewal charge will cost.
Effects of non-renewal of trademarks:
- Loss of Trademark Protection:
A trademark that has been registered grants its owner legal protection and prohibits other parties from using it in connection with the goods or services for which it has been registered. Trademark protection is necessary to maintain the trademark’s exclusive use rights and stop unauthorized use by third parties.
If the trademark registration is not renewed, the trademark owner loses all rights to use the mark. This implies that the owner of a trademark will have no legal options to stop third parties from using identical or similar trademarks.
- Inability to Enforce Trademark Rights:
Trademark owners have the right to take legal action against anyone who uses their trademark without permission. This legal action can take various forms, including sending a cease-and-desist letter, filing a lawsuit, or seeking arbitration.
However, without a valid trademark registration, the trademark owner loses the ability to enforce their trademark rights against infringers. This means that infringers may be able to continue using the trademark without consequences, leading to a loss of revenue, brand reputation, and customer loyalty.
- Difficulty in Proving Trademark Ownership:
Trademark registration provides legal evidence of ownership of the trademark. Once a trademark registration expires, it becomes difficult for the trademark owner to prove that they are the rightful owner of the trademark.
This can be problematic in situations where there is a dispute over the ownership of the trademark. Without a valid trademark registration, the trademark owner may not be able to claim ownership of the trademark or defend themselves against claims of trademark infringement by others.
- Loss of Goodwill:
A trademark is not just a symbol or a sign; it is also a source of goodwill and reputation for the trademark owner. A well-known and established trademark can be an essential asset to a business.
If the trademark registration is not renewed, the trademark owner may lose the goodwill associated with the trademark, which can have a negative impact on their business. In some cases, the loss of a trademark registration can lead to a decline in sales, loss of market share, and a damaged reputation.
- Financial Losses:
The loss of a trademark registration can result in financial losses for the trademark owner. The trademark owner may have invested significant time and money in building up the reputation of their trademark. Without a valid trademark registration, they may not be able to continue using the trademark, which can lead to a loss of business and revenue.
Furthermore, the cost of rebranding, marketing, and advertising a new trademark can be expensive and time-consuming. It is often easier and more cost-effective to maintain a trademark registration than to create a new one.
- Criminal Liability:
In some cases, the unauthorized use of a registered trademark may be considered a criminal offense. If a trademark owner fails to renew their trademark registration and another party starts using the trademark, the trademark owner may not only lose their exclusive right to use the trademark but may also face criminal liability for unauthorized use of the trademark.
Conclusion
In conclusion, the trademark renewal process in India is a crucial step that trademark owners must take to ensure that they maintain their exclusive rights to use their trademarks. Failure to renew a trademark registration can have significant consequences, including loss of trademark protection, inability to enforce trademark rights, difficulty in proving trademark ownership, loss of goodwill, financial losses, and potential criminal liability. Therefore, trademark owners need to keep track of their trademark renewal dates and renew their trademark registrations on time to avoid any inconvenience or loss of rights. It is also advisable for trademark owners to seek legal advice to ensure that their trademark registrations are renewed correctly and timely to avoid any legal complications.
